RTX Scientific, Incorporatedv.Nu-Calgon Wholesaler, Inc.

Trademark Trial and Appeal Board

Mar 22, 2013

No. 92055285 (T.T.A.B. Mar. 22, 2013)

Baxley Mailed: March 22, 2013

Cancellation No. 92055285

RTX Scientific, Incorporated

v.

Nu-Calgon Wholesaler, Inc.

Andrew P. Baxley, Interlocutory Attorney:

In the above-captioned proceeding, RTX Scientific,
Inc. (“petitioner”) seeks to cancel Nu-Calgon Wholesaler,
Inc.’s (“respondent”) registration for the following mark,
, for “cleaning preparation for air conditioning or
refrigeration coils” in International Class 3.1 As grounds
for cancellation, petitioner alleges that: (1) the mark is
merely descriptive under Trademark Act Section 2(e)(1), 15
U.S.C. § 1052(e)(1), and has not acquired distinctiveness;
(2) the mark comprises matter that, as a whole, is
functional under Trademark Act Section 2(e)(5), 15 U.S.C. §

1 Registration No. 3888696, issued December 14, 2010. The
registration includes a claim of distinctiveness under Trademark
Act Section 2(f), 15 U.S.C. § 1052(f), and includes the following
statements: “The color(s) blue is/are claimed as a feature of
the mark. The mark consists of the color blue as applied to the
liquid portion of the goods inside the container. The dotted
outline of the goods is intended to show the position of the mark
on the goods and is not part of the mark.”
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
This Decision is a
Precedent of the TTAB
Cancellation No. 92055285
2
1052(e)(5); and (3) the mark is generic.2 Respondent, in
its answer, denied the salient allegations of the petition
to cancel.
On October 26, 2012, petitioner filed an expert
disclosure statement with the Board wherein it identified
Roger Holder as an “unretained expert” and indicated that,
on October 10, 2012, it served on respondent an expert
disclosure statement, in accordance with TBMP Section
401.03 (3d ed. rev. 2012) and Fed. R. Civ. P. 26(a)(2)(C).3
This case now comes up for consideration of
respondent’s motion (filed November 6, 2012) to exclude the
expert testimony of Roger Holder or to compel a written
expert report under Fed. R. Civ. P. 26(a)(2)(B) prepared
and signed by Mr. Holder. The motion has been fully
briefed.

2 Petitioner also alleges fraud, but that claim is legally
insufficient. In particular, (1) such claim is made upon
information and belief without setting forth specific facts upon
which that belief is based, and (2) such claim does not include
an allegation that the false, material representation of fact at
issue was made with the intent to deceive the USPTO into issuing
a registration to which respondent was not entitled. See In re
Bose Corp., 580 F.3d 1240, 91 USPQ2d 1938 (Fed. Cir. 2009).

3 Any party disclosing plans to use an expert must notify the
Board that it has made the required disclosure (but should not
file with the Board copies of the materials provided to adverse
parties) to comply with Fed. R. Civ. P. 26(a)(2). It is unclear
why petitioner waited sixteen days to notify the Board that it
had made expert disclosures. The better practice is to notify
the Board concurrently with disclosure to the adverse party.
Cancellation No. 92055285
3
The Board does not make prospective or hypothetical
evidentiary rulings. See, e.g., Greenhouse Systems Inc. v.
Carson, 37 USPQ2d 1748, 1750 (TTAB 1995) (the Board does
not consider motions in limine). Thus, to the extent that
respondent moves to exclude Mr. Holder’s testimony, the
motion is denied as premature. See Trademark Rules
2.123(c) and (e)(3); TBMP Sections 527.01(f) and 533.02.
Turning to the alternative motion to compel petitioner
to produce an expert report prepared and signed by Mr.
Holder, a motion to compel is among the remedies available
to a party alleging that its adversary has served
inadequate disclosures. See Influance Inc. v. Zuker, 88
USPQ2d 1859, 1860 n.3 (TTAB 2008); TBMP Section 523.01.
The Board finds initially that respondent made a good faith
effort to resolve the parties’ dispute prior to seeking
Board intervention, in compliance with Trademark Rule
2.120(e)(1).
In support of the motion to compel, respondent asserts
that, in petitioner’s expert disclosure and supplemental
expert disclosure, petitioner has improperly provided only
limited information regarding the witness and his expected
testimony, and “appears to be relying on Fed. R. Civ. P.
26(a)(2)(C) to claim that Mr. Holder does not need to
provide a written report.” Specifically, respondent notes
Cancellation No. 92055285
4
that petitioner has not provided the more detailed written
report required of a witness “retained or specially
employed to provide expert testimony in the case or one
whose duties as the party’s employee regularly involve
giving expert testimony,” under Fed. R. Civ. P.
26(a)(2)(B). Respondent included copies of petitioner’s
expert disclosure and supplemental expert disclosure as
exhibits to its motion.
Petitioner, in its brief in response, admits that “Mr.
Holder is a third-party witness that is capable of
providing expert testimony.” However, petitioner asserts
that it did not retain Mr. Holder; that he is not specially
employed by petitioner; that he has not been, and will not
be, compensated by petitioner; and that he has not prepared
any report for petitioner. Petitioner further asserts that
district courts distinguish between retained and unretained
expert witnesses; that Rule 26(a)(2)(B) does not require
written reports with regard to unretained expert witnesses;
and respondent can seek information from Mr. Holder by the
subpoena duces tecum procedure under Fed. R. Civ. P. 45.
Accordingly, petitioner contends that it need not comply
with the requirements for a written report of Fed. R. Civ.
Cancellation No. 92055285
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P. 26(a)(2)(B) and therefore asks that the Board deny
respondent’s motion.4
In reply, respondent asserts that it will be unfairly
surprised and prejudiced by allowing unretained expert
witness testimony without a written report; that the Board
does not distinguish between retained and unretained
experts and “routinely requires written reports to be
submitted in those rare cases where expert witnesses are
actually used”; and that expert witnesses may be considered
retained even where they are not compensated.
The Board has noted that “expert testimony is
expensive and typically not utilized in Board proceedings.”
Miscellaneous Changes to Trademark Trial and Appeal Board
Rules, 72 Fed. Reg. 42,242, 42,254 (August 1, 2007). In
addition, the Board previously has distinguished only
between testifying and consulting experts, the latter of
whom were not expected to testify. Miscellaneous Changes
to Trademark Trial and Appeal Board Rules, 72 Fed. Reg.
42,242, 42,246 (August 1, 2007). However, when a
testifying expert is utilized in a Board proceeding, the
party’s planned use of the expert witness is largely

4 The parties do not dispute that petitioner has complied with
the requirements of Fed. R. Civ. P. 26(a)(2)(A) & (C). The
instant motion focuses solely on whether petitioner need provide
a written report prepared and signed by its expert witness.
Cancellation No. 92055285
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governed by Fed. R. Civ. P. 26(a)(2). Trademark Rule
2.120(a)(2).
The 2010 amendment to Fed. R. Civ. P. 26(a)(2) makes
it clear that there is a distinction between an expert
witness who is required to provide a report and one who is
not. Respondent’s reliance on the discussion in General
Council of the Assemblies of God v. Heritage Music
Foundation, 97 USPQ2d 1890, 1891 (TTAB 2011) concerning the
requirement of a written report from “any” expert witness
is unavailing. The circumstances in that case, as well as
the issues it presented (including whether the written
report was defective), and the fact that the circumstances
at issue arose prior to the effective date of the 2010
amendment, make that case distinguishable from the
circumstances and issue presented herein (i.e., whether a
written report is required). See also TBMP Section 401.03.
The question presented by the instant case is a matter of
first impression for the Board.
The applicable federal rule provides that “a party
must disclose ... the identity of any witness it may use at
trial to present evidence under Federal Rule of Evidence
702, 703, or 705.”5 Fed. R. Civ. P. 26(a)(2)(A). Under

5 Federal Rule of Evidence 702 states as follows:
Cancellation No. 92055285
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Fed. R. Civ. P. 26(a)(2)(B), an expert “disclosure must be
accompanied by a written report—prepared and signed by the
witness—if the witness is one retained or specially
employed to provide expert testimony in the case or one
whose duties as the party’s employee regularly involve
giving expert testimony.”6 Thus, courts distinguish between

A witness who is qualified as an expert by knowledge,
skill, experience, training, or education may testify
in the form of an opinion or otherwise if:
(a) the expert’s scientific, technical, or
other specialized knowledge will help the
trier of fact to understand the evidence or
to determine a fact in issue;
(b) the testimony is based on sufficient
facts or data;
(c) the testimony is the product of
reliable principles and methods; and
(d) the expert has reliably applied the
principles and methods to the facts of the
case.
Rule 703 states as follows:
An expert may base an opinion on facts or data in the
case that the expert has been made aware of or
personally observed. If experts in the particular
field would reasonably rely on those kinds of facts or
data in forming an opinion on the subject, they need
not be admissible for the opinion to be admitted. But
if the facts or data would otherwise be inadmissible,
the proponent of the opinion may disclose them to the
jury only if their probative value in helping the jury
evaluate the opinion substantially outweighs their
prejudicial effect.
Rule 705 states that “[u]nless the court orders otherwise, an
expert may state an opinion — and give the reasons for it —
without first testifying to the underlying facts or data. But
the expert may be required to disclose those facts or data on
cross-examination.”

6 That report must contain:
(i) a complete statement of all opinions the witness
will express and the basis and reasons for them;
(ii) the facts or data considered by the witness in
forming them;
Cancellation No. 92055285
8
retained and specially employed experts, who must provide
written reports, and unretained experts, who do not.7 See,
e.g., Aumand v. Dartmouth Hitchcock Med. Ctr., 611 F. Supp.
2d 78, 88 (D.N.H. 2009).
In an effort to “resolve[] a tension that has
sometimes prompted courts to require reports under Rule
26(a)(2)(B) even from witnesses exempted from the report
requirement,” Rule 26(a)(2)(C) was added, effective
December 1, 2010. Fed. R. Civ. P. 26(a)(2)(C) advisory
committee notes (2010). Rule 26(a)(2)(C) expressly
addresses witnesses who do not need to provide a written
report. The purpose of the Rule 26(a)(2)(C) was to
emphasize that a Rule 26(a)(2)(B) “report is required only
from an expert described in (a)(2)(B).” Fed. R. Civ. P.
26(a)(2)(C) advisory committee notes (2010) (emphasis
added).

(iii) any exhibits that will be used to summarize or
support them;
(iv) the witness's qualifications, including a list of
all publications authored in the previous 10 years;
(v) a list of all other cases in which, during the
previous 4 years, the witness testified as an expert
at trial or by deposition; and
(vi) a statement of the compensation to be paid for
the study and testimony in the case.
Fed. R. Civ. P. 26(a)(2)(B).

7 Under Fed. R. Civ. P. 26(a)(2)(C), a witness who is not
required to provide a Rule 26(a)(2)(B) report need only disclose
“(i) the subject matter on which the witness is expected to
present evidence ... [and] (ii) a summary of the facts and
opinions to which the witness is expected to testify.”

Cancellation No. 92055285
9
The United States Court of Appeals for the First
Circuit, in Downey v. Bob’s Discount Furniture Holdings,
Inc., 633 F.3d 1, 6-7 (1st Cir. 2011), stated as follows
with regard to Rule 26(a)(2)(B):8
[T]o give the phrase ‘retained or specially
employed’ any real meaning, a court must
acknowledge the difference between a percipient
witness who happens to be an expert and an expert
who without prior knowledge of the facts giving
rise to litigation is recruited to provide expert
opinion testimony. ... This point is most aptly
illustrated by the distinction that courts have
drawn between treating physicians and physicians
recruited for the purpose of giving expert
opinion testimony. ... [Where] the expert comes
to the case as a stranger and draws the opinion
from facts supplied by others, in preparation for
trial, he reasonably can be viewed as retained or
specially employed for that purpose, within the
purview of Rule 26(a)(2)(B). ... While we
acknowledge that the difference between an
opinion formulated by an on-the-scene expert
during treatment (e.g., by a treating physician)
and one formulated by an expert hired in
anticipation of testimony does not leap off the
page, a close reading of the text of Rule
26(a)(2)(B) convinces us that this is the precise
distinction that the drafters of the rule had in
mind.

See also Southard v. State Farm Fire and Cas. Co., Case No.
4:11-cv-243, 2013 WL 209224, at *3 (S.D. Ga. January 17,
2013), citing Downey v. Bob’s Discount Furniture Holdings,
Inc., supra at 6.

8 The First Circuit, in Downey, made its decision based on Rule
26(a) as it existed at the time of the trial, but noted that the
2010 amendment to that rule reinforced its interpretation of that
rule. Downey v. Bob’s Discount Furniture Holdings, Inc., supra
at 7 n.4.
Cancellation No. 92055285
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In tort and personal injury cases, the on-the-scene
involvement of an expert not required to provide a written
report typically arises from the expert’s participation, in
some way, in the ongoing sequence of events that gave rise
to the litigation in question.9 Examples include: treating
physicians (see Sprague v. Liberty Mut. Ins. Co., 177
F.R.D. 78, 81 (D.N.H. 1998); Fed. R. Civ. P. 26(a)(2)(C)
advisory committee notes (2010)); treating pesticide
professionals (see Downey v. Bob’s Discount Furniture
Holdings, Inc., supra); and treating water damage
remediation professionals (see Southard v. State Farm Fire
and Cas. Co., supra).
Board inter partes proceedings are based upon a
plaintiff’s stated belief of damage arising from
registration of a mark. See Trademark Act Sections 13(a)
and 14, 15 U.S.C. §§ 1063(a) and 1064. Unlike tort or
personal injury cases, there are usually no specific
incidents –- e.g., automobile accidents, floods, or bedbug
infestations -- that give rise to those proceedings. Thus,
in Board inter partes proceedings, an expert is typically
recruited on the basis of experience in the relevant trade

9 “A witness who is not required to provide a report under Rule
26(a)(2)(B) may both testify as a fact witness and also provide
expert testimony under Evidence Rule 702, 703, or 705.” Fed. R.
Civ. P. 26(a)(2)(C) advisory committee notes (2010).

Cancellation No. 92055285
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or industry and not on the basis of his personal knowledge
of or on-the-scene involvement in any sequence of events
that gave rise to the Board proceedings. See, e.g.,
Corporacion Habanos, S.A. v. Guantanamera Cigars Co., 102
USPQ2d 1085 (TTAB 2012) (tobacconist offered expert
testimony regarding Cuban cigar brands in the United
States); UMG Recordings, Inc. v. Mattel, Inc., 100 USPQ2d
1868 (TTAB 2011) (a musicologist and a marketing
professional offered expert testimony regarding the
significance of the term MOTOWN); Kistner Concrete
Products, Inc. v. Contech Arch Technologies, Inc., 97
USPQ2d 1912 (TTAB 2011) (patent attorney and civil
engineers specializing in structural engineering).
Where an expert’s opinion testimony arises from his
enlistment as an expert and not from an on-the-scene
involvement in any incidents giving rise to the litigation,
that expert is “retained” for purposes of Rule 26(a)(2)(B)
and that rule therefore requires a written report.10 See
Downey v. Bob’s Discount Furniture Holdings, Inc., supra at
6.

10 Failure to comply with Rule 26(a)(2) may result in a party
being precluded from “us[ing] that witness or relevant expert
information to supply evidence on a motion, at a hearing, or at
trial, unless the failure was substantially justified or is
harmless.” Esposito v. Home Depot U.S.A., Inc., 590 F.3d 72, 77
(1st Cir. 2009). See Fed. R. Civ. P. 37(c)(1).

Cancellation No. 92055285
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In this case, Mr. Holder is identified in petitioner’s
expert disclosures as an “expert” who is “expected to
testify regarding the HVAC/R industry, training provided by
the Refrigeration Service Engineers Society to HVAC/R
contractors and technicians, methods and practices of
HVAC/R contractors, the functionality of [respondent’s]
claimed trade dress, and the lack of distinctiveness ... of
[respondent’s] claimed trade dress.” In the supplemental
expert disclosure, petitioner states that Mr. Holder “will
testify that the use of ‘blue’ for alkaline coil cleaners
has been common in the industry for over a decade and that
color-codes for liquids are also common in the industry.”
These disclosures indicate that Mr. Holder had no on-
the-scene involvement in or personal knowledge of any
incidents giving rise to this proceeding, but rather will
offer expert testimony regarding the use of the color blue
for alkaline coil cleaners in the HVAC industry. Further,
the disclosures suggest that Mr. Holder has reviewed
evidence supplied by petitioner regarding the alleged
functionality and lack of distinctiveness of respondent’s
trade dress in preparation of such expert testimony. As
such, Mr. Holder is a “retained” expert witness, and
petitioner must provide a written report regarding Mr.
Cancellation No. 92055285
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Holder’s intended expert testimony pursuant to Fed. R. Civ.
P. 26(a)(2)(B).
Contrary to petitioner’s arguments, neither the
language of Rule 26(a)(2) nor the aforementioned case law
indicates that whether or not a witness is “retained or
specially employed to provide expert testimony” is
determined by whether or not a party has control over the
expert’s time and testimony or compensates the expert.
Thus, the facts that Mr. Holder is not an employee of
petitioner and that he is not being compensated are not
controlling. Cf. Innogenetics, N.V. v. Abbott
Laboratories, 512 F.3d 1363, 1375, 85 USPQ2d 1641, 1649-50
(Fed. Cir. 2008) (given witness’s role as inventor, mere
fact that he was not being compensated did not exempt him
from furnishing an expert report as a witness who will be
giving scientific testimony).
In view thereof, respondent’s motion to compel is
granted. Petitioner is allowed until thirty days from the
mailing date set forth in this order either to: (1) serve
a written report in compliance with Rule 26(a)(2)(B)
prepared and signed by Mr. Holder and his proposed
Cancellation No. 92055285
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testimony, or (2) amend its expert disclosures to delete
Mr. Holder as an expert witness.11
Proceedings herein are resumed. The discovery period
is extended to allow respondent an opportunity to take a
discovery deposition of petitioner’s expert witness and to
obtain a rebuttal expert witness, should it so desire.
Remaining dates are reset as follows.
Expert Disclosures Due 4/21/2013
Discovery Closes 5/21/2013
Plaintiff's Pretrial Disclosures Due 7/5/2013
Plaintiff's 30-day Trial Period Ends 8/19/2013
Defendant's Pretrial Disclosures Due 9/3/2013
Defendant's 30-day Trial Period Ends 10/18/2013
Plaintiff's Rebuttal Disclosures Due 11/2/2013
Plaintiff's 15-day Rebuttal Period Ends 12/2/2013
In each instance, a copy of the transcript of
testimony, together with copies of documentary exhibits,
must be served on the adverse party within thirty days
after completion of the taking of testimony. Trademark
Rule 2.l25.
Briefs shall be filed in accordance with Trademark
Rules 2.128(a) and (b). An oral hearing will be set only
upon request filed as provided by Trademark Rule 2.l29.

11 The foregoing discussion on this question of first impression
should not be interpreted as an indication either that the
Board’s view of what type of nonparty testimony constitutes
expert testimony for Board inter partes proceedings has changed,
or that such testimony is necessary as a routine matter.
Cancellation No. 92055285
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If either of the parties or their attorneys should
have a change of address, the Board should be so informed
promptly.