Empresa Cubana Del Tabaco d.b.a Cubatabacov.General Cigar Co., Inc.

Trademark Trial and Appeal Board

Aug 26, 2020

92025859 (T.T.A.B. Aug. 26, 2020)

August 26, 2020

Cancellation No. 92025859

Empresa Cubana Del Tabaco d.b.a
Cubatabaco

v.
General Cigar Co., Inc.

Rebecca Stempien Coyle, Interlocutory Attorney:
This case comes up on Petitioner’s February 7, 2020, motion to strike the
December 30, 2019, supplemental expert report of Richard Carleton Hacker (the
“Supplemental Report”) and any trial testimony related thereto or, in the alternative,
to reopen discovery.1 The motion is fully briefed.
I. Background
This proceeding commenced more than twenty-three years ago. After nearly
fifteen years of various suspensions for civil litigation, Board proceedings were
resumed on June 23, 2011.2 Shortly after pleadings were closed on July 7, 2011,
Respondent filed a motion for summary judgment, and proceedings remained
suspended pending disposition of that motion, including Petitioner’s appeal of the

1 244 TTABVUE.
2 60 TTABVUE.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
General Contact Number: 571-272-8500
General Email: TTABInfo@uspto.gov
THIS ORDER IS A
PRECEDENT OF THE
TTAB
Cancellation No. 92025859

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summary judgment motion to the United States Court of Appeals for the Federal
Circuit.3 Proceedings were again resumed on October 28, 2015, and the Board reset
discovery and trial dates.4 Discovery and trial dates were subsequently reset several
times prior to the parties’ deadline for expert disclosures.5 Under the resulting
schedule set in accordance with the parties’ agreement for operative dates, expert
disclosures were due on March 15, 2017, rebuttal expert disclosures were due May
31, 2017, and discovery was set to close on September 15, 2017.6
On May 31, 2017, Respondent served the rebuttal expert disclosure of Mr. Hacker
(the “Original Report”), and Petitioner deposed Mr. Hacker on June 15, 2017. 7
Proceedings were again suspended on October 23, 2017, pending disposition of
Petitioner’s motion for leave to use an undisclosed expert report. Petitioner’s motion
was denied on December 29, 2017, proceedings were resumed and trial dates reset
once more with discovery scheduled to close on February 28, 2018, and Petitioner’s
trial period to end on May 29, 2018.8 After numerous other suspensions and resetting
of dates, Petitioner’s trial period ended on September 16, 2019.9 On October 22, 2019,

3 See 64 TTABVUE, 75 TTABVUE, 82 TTABVUE.
4 88 TTABVUE.
5 91 TTABVUE, 99 TTABVUE, 100 TTABVUE, 103 TTABVUE, 106 TTABVUE, 108
TTABVUE.
6 101 TTABVUE, 107 TTABVUE, 108 TTABVUE.
7 244 TTABVUE, see also 122 TTABVUE 3.
8 122 TTABVUE.
9 168 TTABVUE. On September 20, 2019, Petitioner timely filed its table summarizing the
testimony and materials submitted during its testimony period. 237 TTABVUE, see also 207
TTABVUE.
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the Board granted Respondent’s consented motion for an extension of time to
complete the cross-examination of one of Petitioner’s trial witnesses.10
In accordance with the Board ’s October 22, 2019, order, Respondent’s pretrial
disclosures were due by December 30, 2019.11 On December 30, 2019, Respondent
served the Supplemental Report, followed that same day by Respondent’s pretrial
disclosures.12
Petitioner contends that the Supplemental Report consists of new and previously
undisclosed opinions, namely, the role of cigar podcasts in consumer confusion (when
the Original Report never mentioned cigar podcasts) and the use of cigar publications
to confirm the sophistication of premium cigar consumers (despite the lack of citation
to, or reliance on, cigar publications as such evidence in the Original Report).13
Respondent contends the Supplemental Report does not contain new opinions, rather
it only contains the following “four new facts”: the existence of cigar podcasts as an
additional source of information for U.S. cigar consumers, Mr. Hacker ’s participation
in cigar podcasts in 2019, regulatory restrictions on U.S. citizens travelling to Cuba
which were imposed after the Original Report, and three articles published after the
Original Report “in the cigar press” which support the Original Report ’s conclusion
of no confusion.14

10 241 TTABVUE.
11 Id.
12 244 TTABVUE 9, 245 TTABVUE 32, 34.
13 244 TTABVUE 3.
14 245 TTABVUE 4-5.
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Petitioner’s motion to strike raises two issues: whether, under the Federal Rules
of Civil Procedure, (1) Respondent’s attempt to add the Supplemental Report as trial
evidence is untimely, and (2) the Supplemental Report constitutes permissible
supplementation.
II. Applicable Law
The supplementation of expert disclosures in inter partes proceedings before the
Board is governed by the Federal Rules of Civil Procedure. 37 C.F.R. § 2.116(a),
Trademark Rule 2.116(a); see also Great Seats Inc. v. Great Seats Ltd., 100 USPQ2d
1323, 1326 (TTAB 2011). A written expert report must accompany the disclosure of
any expert witness and contain “a complete statement of all opinions the witness will
express and the basis and reasons for them …”. Fed. R. Civ. P. 26(a)(2)(B)(i); see also
TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (“TBMP”) § 401.03
(June 2020). The purpose of this rule “is to prevent unfair surprise at trial and to
permit the opposing party to prepare rebuttal reports, to depose the expert in advance
of trial, and to prepare for deposition and cross-examinations at trial.” Gemological
Inst. of Am., Inc. v. Gemology Headquarters Int’l, LLC, 111 USPQ2d 1559, 1561-62
(TTAB 2014) (quoting Minebea Co. v. Papst, 231 F.R.D. 3, 5-6 (D.D.C. 2005)); see also
Coles v. Perry, 217 F.R.D. 1, 4 (D.D.C. 2003) (“By ‘locking’ the expert witness into …
‘a complete statement of all opinions to be expressed and the basis and reasons
therefor,’ the opposing party knows exactly what she is facing and can decide whether
to take the deposition of the expert and how to prepare for cross examination and
rebuttal.”).
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“A party may supplement or correct its Fed. R. Civ. P. 26(a)(2)(B) expert
disclosures ‘if the party learns that in some material respect the disclosure or
response is incomplete or incorrect, and if the additional or corrective information has
not otherwise been made known to the other parties during the discovery process or
in writing.’” Gemological Inst. of Am., 111 USPQ2d at 1562 (quoting Fed. R. Civ. P.
26(e)(1)(A) (emphasis added)). In general, any such supplementation must be done
“in a timely manner,” however any additions or changes to an expert’s report or
information given during the expert’s deposition, “must be disclosed by the time the
party’s pretrial disclosures are due.” Fed. R. Civ. P. 26(e)(1)(A) and (e)(2); see also
Gemological Inst. of Am., 111 USPQ2d at 1562.
The supplementation permissible under Fed. R. Civ. P. 26(e) is narrow in scope
and allowed only to “correct[] inaccuracies, or fill[] the interstices of an incomplete
report based on information that was not available at the time of the initial
disclosure.” Keener v. United States, 181 F.R.D. 639, 640 (D. Mont. 1998), quoted in
Gemological Inst. of Am., 111 USPQ2d at 1562. If a party is relying on new
information to support its supplemental expert disclosure, then the new information
relied on must have been “previously unknown or unavailable, [and] render[]
information previously provided in an initial report inaccurate or misleading because
it was incomplete.” MF Glob. Holdings Ltd. v. PricewaterhouseCoopers LLP, 232 F.
Supp. 3d 558, 572 (S.D.N.Y. 2017) (quotation omitted); see also Akeva LLC v. Mizuno
Corp., 212 F.R.D. 306, 310 (M.D.N.C. 2002) (“Rule 26(e) envisions supplementation
when a party’s discovery disclosures happen to be defective in some way so that the
Cancellation No. 92025859

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disclosure was incorrect or incomplete and, therefore, misleading.” (citing Keener, 181
F.R.D. 639)).
A “party may not utilize Rule 26(e)(1)(A) ‘to sandbag one’s opponent’ or to ‘deepen’
or ‘strengthen’ the party’s case where the information should have been included in
the expert report.” Gemological Inst. of Am., 111 USPQ2d at 1562 (quoting Beller v.
United States, 221 F.R.D. 696, 701 (D.N.M. 2003)). Construing the duty to
supplement to allow parties to bolster an expert ’s prior opinions “would wreak havoc
on docket control and amount to unlimited expert preparation.” Akeva, 212 F.R.D. at
310, see also Beller, 221 F.R.D. at 701.
“A supplemental report which seeks to clarify an expert ’s earlier opinions or
provides new examples and illustrations to bolster them is not proper
supplementation.” Gemological Inst. of Am., 111 USPQ2d at 1562 (citing Akeva, 212
F.R.D. at 310). Supplementation under Rule 26(e) “does not cover failure of omission
because the expert did an inadequate or incomplete preparation.” Akeva, 212 F.R.D.
at 310 (citations omitted); see also SD3, LLC v. Rea, 71 F. Supp. 3d 189, 195 (D.D.C.
2014) (Expert’s declaration was impermissible “bolstering” under Rule 26(e) because
the expert “did not merely correct inaccuracies in his deposition testimony [but] found
additional evidence that further substantiated his previously stated expert
opinions.”); Cedar Petrochemicals, Inc. v. Dongbu Hannong Chem. Co., Ltd., 769 F.
Supp. 2d 269, 278 (S.D.N.Y. 2011) (“[E]xperts are not free to continually bolster,
strengthen, or improve their reports by endlessly researching the issue they already
opined upon, or to continually supplement their opinions.”).
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As to timing, Fed. R. Civ. P. 26(e)(2) provides that “[a]ny additions or changes to
[an expert’s report] must be disclosed by the time the party’s pretrial disclosures”
are due. (Emphasis added). See Coene v. 3M Co., 303 F.R.D. 32, 42 (W.D.N.Y. 2014)
(“Supplemental reports must be provided at the same time that a party’s pretrial
disclosures are due.” (citing Fed. R. Civ. P. 26(e)(2)); see also Rivera-Marrero v.
Presbyterian Cmty. Hosp., 255 F. Supp. 3d 290, 296 (D.P.R. 2017) (“The disclosing
party had a duty to supplement the written report by November 14, 2016, which was
effectively ‘at least 30 days before trial’” or the time for the party’s pretrial disclosures
under Fed. R. Civ. P. 26(a)(3)); Marathon Petroleum Co. LP v. Midwest Marine, Inc.,
906 F. Supp. 2d 673, 693 (E.D. Mich. 2012).
III. Decision
A. Whether the Supplemental Report is a Proper Supplementation

Respondent served the Supplemental Report the same day as its deadline for, but
before serving, its pretrial disclosures.15 Accordingly, the Supplemental Report was
timely under Fed. R. Civ. P. 26(e)(2).
Petitioner contends that supplemental expert reports must be served the day
before that party’s pretrial disclosures are due, relying on a footnote in Entravision
Commc’n Corp. v. Liberman Television LLC, 113 USPQ2d 1526, 1528 n.5 (TTAB
2015). However, the footnote in Entravision addressed the relevant timeline of that
proceeding, namely a motion filed before the party’s pretrial disclosures to substitute
an expert. Entravision did not address the same question of timeliness under Fed. R.

15 244 TTABVUE 9, 245 TTABVUE 32, 34.
Cancellation No. 92025859

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Civ. P. 26(e)(2) as is presented in this proceeding. Respondent’s disclosure of the
Supplemental Report on the day its pretrial disclosures were due is not untimely.
The Board next turns to whether the report is a permissible supplementation. As
stated above, the Supplemental Report is permissible if the Original Report was
materially incomplete or incorrect, and the supplement adds or corrects information
previously unavailable, or unknown, to Mr. Hacker that renders information in the
Original Report inaccurate or misleading. While “[t]he Board does not read testimony
and consider substantive objections to evidence, or determine the probative value of
evidence, prior to final hearing,” Weyerhauser Co. v. Katz, 24 USPQ2d 1230, 1233
(TTAB 1992), the arguments presented here are sufficient upon which to make a
determination. By Respondent’s own admission, the Supplemental Report contains
“facts occurring or discovered by the expert after the date of the Original Report that
support the expert’s original opinions”.16 Respondent states that in the Original
Report, Mr. Hacker opined that Petitioner’s expert reports “no longer ‘describe the
American cigar scene today’” as shown by “examples of sources of information
available to cigar smokers not existing in 2002”.17 However, as Respondent concedes,
“cigar podcasts” existed at the time the Original Report was prepared.18 Respondent
fails to explain how Mr. Hacker’s preparation of his Original Report failed to include
the existence of cigar podcasts, which suggests an inadequate or incomplete
preparation of the original report as it pertains to podcasts.

16 245 TTABVUE 3.
17 Id. at 14.
18 Id. at 15.
Cancellation No. 92025859

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Moreover, for purposes of supplementation under Fed. R. Civ. P. 26(e)(2) any new
information must cause the original disclosure to be either inaccurate or misleading
because it was incomplete. Respondent asserts that the Supplemental Report is
permissible because a determination of likelihood of confusion is based on the facts
as of the time of trial, and due to the thirty-two month gap between the Original
Report and Respondent’s trial period, the Original Report is now incomplete.
Respondent’s broad construction of “incomplete” is not well-taken. While
likelihood of confusion is determined based on the factual situation at the time of
trial, and the length of time between the Original Report and Respondent’s trial
period has been considerable, this alone does not permit a deviation from the narrow
scope of permissible supplementation under Fed. R. Civ. P. 26(e). While the Board
may allow, in appropriate situations, parties to supplement the factual record during
trial, Respondent does not demonstrate that the Supplemental Report corrects,
clarifies, or fills in a gap in the Original Report that rendered the original disclosure
inaccurate or misleading. Respondent’s contention that the new information is
necessary for the Board to evaluate Mr. Hacker’s opinion, and to “to show that [his]
expert opinion … remains valid in light of current facts” is not a basis for
supplementation under the Rule.19 Respondent does not explain why the validity of
the Original Report would be in question under current facts, nor how the new
information in the Supplemental Report is necessary to make the Original Report
complete or accurate. Respondent concedes that the Supplemental Report merely

19 Id. at 11.
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seeks to “support the expert’s original opinions” with new examples and
illustrations.20 This is bolstering, not a proper supplementation under Fed. R. Civ. P.
26(e).
B. Whether the Supplemental Report Should Be Excluded

An “improper Rule 26(e) supplementation results in an untimely disclosure of an
expert opinion, triggering Fed. R. Civ. P. 37(c)(1) sanctions, including” its preclusion,
unless the untimely disclosure was substantially justified or harmless. Gemological
Inst. of Am., 111 USPQ2d at 1562. See also Fed. R. Civ. P. 37(c)(1); Keener, 181 F.R.D.
at 641; SD3, LLC, 71 F. Supp. 3d at 194-195; Cook v. Rockwell Int’l Corp., 580 F.
Supp. 2d 1071, 1171 (D. Colo. 2006). Accordingly, having determined that the
Supplemental Report is not a proper supplementation, the Board applies “the
following five-factor test to determine whether the untimely disclosure is
substantially justified or harmless: ‘1) the surprise to the party against whom the
evidence would be offered; 2) the ability of that party to cure the surprise; 3) the
extent to which allowing the testimony would disrupt the trial; 4) importance of the
evidence; and 5) the nondisclosing party’s [or the late disclosing party’s] explanation
for its failure to disclose the evidence.’” Gemological Inst. of Am., 111 USPQ2d at 1562
(quoting Great Seats, 100 USPQ2d 1323, 1327 (TTAB 2011) (internal citation
omitted)); see also ProMark, 114 USPQ2d at 1240.
Petitioner contends the Supplemental Report is highly prejudicial because it
asserts previously undisclosed facts and opinions regarding information that was not

20 Id. at 3.
Cancellation No. 92025859

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within the scope of the Original Report. Petitioner also asserts discovery closed more
than a year ago and any effort to cure the surprise would require a reopening of
discovery on the new facts and opinions, thus resulting in a significant delay and
disruption to trial. Petitioner further contends that Respondent has no reasonable
explanation for why it did not disclose the facts that existed in 2018 (the existence of
podcasts) or that Mr. Hacker would rely on cigar publications in support of his
opinion, by the close of discovery or the start of trial.
In response, Respondent contends that the facts in the Supplemental Report are
important to the Board’s determination of Petitioner’s Trademark Act Section 2(d)
claim because the supplemental facts cited therein show that Mr. Hacker’s opinion in
the Original Report is supported by current facts and remains valid. Respondent
further contends that the Supplemental Report does not create an unfair surprise
because it only sets forth four additional “groups of facts,” and Petitioner can prepare
to cross-examine Mr. Hacker on those facts without the need for material additional
research or expense. Respondent maintains that the majority of the facts in the
Supplemental Report did not exist at the time of the Original Report. Specifically, the
change in United States policy toward Cuba was not public record until June 2019,
the three articles were published in 2018, July 2019, and sometime in 2019, and Mr.
Hacker’s appearance on several podcasts began in July 2019.21 While cigar podcasts
existed at the time of the Original Report, Mr. Hacker attested that he did not learn
about them until July 2019.22

21 245 TTABVUE 18, 245 TTABVUE 25, ¶¶ 9, 12.
22 245 TTABVUE 25, ¶ 9.
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In its reply, Petitioner contends that “even if likelihood of confusion is assessed at
the time of trial, the trial started on October 8, 2018, when Petitioner ’s testimonial
period opened” and “Respondent could have produced the [supplemental report] at
that time”.23 Petitioner also maintains that it made litigation decisions based on
Hacker’s 2017 report and deposition, and it prepared and presented its case-in-chief
on the basis of the discovery taken in this proceeding, including in relation to Mr.
Hacker.
With respect to the first Great Seats factor, the parties do not agree on the scope
of the newly disclosed information in the Supplemental Report. However, this factor
weighs in favor of Petitioner even under Respondent’s arguments that the
Supplemental Report only includes new facts. Petitioner’s testimony period has
passed, and Petitioner presented its case-in-chief based on the discovery, including in
relation to Mr. Hacker, conducted in this proceeding. Nor does either party suggest
that Respondent indicated to Petitioner its intent to supplement the Original Report.
Addressing factors two and three, Petitioner’s ability to cure the surprise of the
Supplemental Report is significantly diminished because the discovery period closed
nearly two years ago. See Spier Wines Ltd. v. Shepher, 105 USPQ2d 1239, 1245 (TTAB
2012). Reopening discovery at this late stage in this twenty-three year old proceeding
would cause further disruption and delay. Furthermore, allowing Mr. Hacker to
testify as to the additional facts without reopening discovery would require Petitioner
to continue with trial and conduct cross-examination of Mr. Hacker from a

23 247 TTABVUE 7.
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disadvantageous standpoint, despite Petitioner ’s prior deposition of Mr. Hacker
regarding the Original Report. Accordingly, these factors also weigh in favor of
Petitioner.
Regarding the fourth factor, “[i]n determining the importance of the evidence or
testimony to the fair adjudication of the proceedings, the Board will consider various
factors, including whether the testimony is cumulative or if evidence can be
introduced by other means, and whether the proposed testimony would be
admissible.” Spier Wines, 105 USPQ2d at 1244. As noted above, Respondent states
the Supplemental Report supports the Original Report and conclusions.
Subsequently, the Supplemental Report is cumulative of what is in the Original
Report. In view of its cumulative nature, the Board finds that the marginal
importance of the Supplemental Report weighs in favor of Petitioner.
Finally, as to the fifth factor, Respondent seeks to excuse its failure to disclose the
evidence in question by contending many of the additional facts did not exist until
2019, or its expert was not aware of the information until July 2019. Respondent also
asserts that it is necessary for Mr. Hacker to testify as to the additional facts so the
Board can determine whether his opinion is based on the factual circumstances
existing at the time of trial. As both parties have noted, this case is quite old.
Proceedings were suspended, or dates extended, numerous times since the service of
the Original Report.24 Yet, Respondent waited until December 2019, months after the
close of Petitioner’s testimony period and just prior to its own pretrial disclosures, to

24 121 TTABVUE, 125 TTABVUE, 143 TTABVUE, 148 TTABVUE, 156 TTABVUE, 168
TTABVUE, 241 TTABVUE.
Cancellation No. 92025859

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ask Mr. Hacker if there were any factual developments that may have affected the
opinions expressed in the Original Report.25 It is true that parties cannot predict if or
when truly new facts or information will arise. Nonetheless, if Respondent was
concerned with presenting current factual information to the Board for its likelihood
of confusion analysis, then Respondent should have inquired into the need to
“supplement” the Original Report earlier in this proceeding or informed Petitioner
that Respondent was going to update the Original Report to reflect new information
that arose after May 2017.
On balance, after considering the Great Seats factors as they are applicable to this
proceeding, Respondent’s failure to timely disclose the Supplemental Report was not
substantially justified or harmless.
In view of the foregoing, the motion to strike Respondent ’s supplemental expert
report is granted. The Supplemental Report is hereby stricken.
IV. Schedule
Proceedings are resumed. Dates are reset as follows:
Defendant’s 30-day Trial Period Ends 9/15/2020
Plaintiff’s Rebuttal Disclosures Due 9/30/2020
Plaintiff’s 15-day Rebuttal Period Ends 10/30/2020
Plaintiff’s Opening Brief Due 12/29/2020
Defendant’s Brief Due 1/28/2021
Plaintiff’s Reply Brief Due 2/12/2021
Request for Oral Hearing (optional) Due 2/22/2021

25 245 TTABVUE 24, ¶ 7.
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The Federal Rules of Evidence generally apply to Board trials. Trial testimony is
taken and introduced out of the presence of the Board during the assigned testimony
periods. The parties may stipulate to a wide variety of matters, and many
requirements relevant to the trial phase of Board proceedings are set forth in
Trademark Rules 2.121 through 2.125. These include pretrial disclosures, the
manner and timing of taking testimony, matters in evidence, and the procedures for
submitting and serving testimony and other evidence, including affidavits,
declarations, deposition transcripts and stipulated evidence. Trial briefs shall be
submitted in accordance with Trademark Rules 2.128(a) and (b). Oral argument at
final hearing will be scheduled only upon the timely submission of a separate notice
as allowed by Trademark Rule 2.129(a).