Verigo Inc.v.Comm-n-Sense Corp.

Trademark Trial and Appeal Board

Feb 15, 2019

OPP (T.T.A.B. Feb. 15, 2019)

RK
February 15, 2019

Opposition No. 91234331

Verigo Inc.

v.
Comm-n-Sense Corp.

Before Wellington, Hightower and Heasley,
Administrative Trademark Judges

By the Board:

Under the Board’s institution order, discovery closed on January 8, 2018,
Opposer’s pretrial disclosures were due February 22, 2018, and Opposer’s main
testimony period closed on April 8, 2018.1
On April 2, 2018, Opposer filed a “Statement of Trial” along with the following
materials:2
- Copies of invoices;
- A single page advertisement for “INSIGHT Mobile Data”; and

1 2 TTABVUE 4.

2 8 TTABVUE. The same papers, albeit without proof of service, were previously filed by
Opposer on March 28, 2018. 6 TTABVUE. Although the Board issued an order accepting
the filing pursuant to the Board’s discretionary authority, 7 TTABVUE, Opposer,
nonetheless, refiled the papers on April 2, 2018, with proof of service. Accordingly, the
Board has accepted the subsequent filing and has given no further consideration to the
earlier filing.
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 NOT A
PRECEDENT OF THE TTAB
Opposition No. 91234331

2
- A printout of email correspondence.

This matter now comes up on Applicant’s combined motion to strike Opposer’s
putative testimony and evidence for lack of pretrial disclosure and, upon striking
such testimony and evidence, for dismissal under Trademark Rule 2.132(a), 37
C.F.R. § 2.132(a).
Opposer has contested the motion, arguing that its notice of opposition
“contained and disclosed the same and substantially the same information that
Opposer was to provide for pretrial disclosures to Applicant … [which] information
identifies Robin Doherty and all documents the Opposer has referenced and
submitted in the Opposer’s Statement of Trail [sic] submitted on March 28, 2018.”3
Opposer further states that its “Trial Testimony has not introduced any new
witnesses or exhibits to the Applicant,” that it “has presented all evidence and
named all witnesses that it intends to rely on for review by the Applicant,” and that
“Applicant has not been denied any Testimony or Exhibits …”4
Decision
Trademark Rule 2.121(e), 37 C.F.R. § 2.121(e), provides, in relevant part, that
“no later than fifteen days prior to the opening of each testimony period, … the
party scheduled to present evidence must disclose the name … of each witness from
whom it intends to take testimony, or may take testimony if the need arises…. If a
party does not plan to take testimony from any witnesses, it must so state in its
pretrial disclosure.” The purpose of this required disclosure is to permit the adverse

3 12 TTABVUE 2.

4 Id. at 3.
Opposition No. 91234331

3
party to know prior to trial the identity of trial witnesses and thereby avoid unfair
surprise. See Carl Karcher Enters., Inc. v. Carl’s Bar & Delicatessen, Inc., 98
USPQ2d 1370, 1372 (TTAB 2011). A party that fails to make the required pretrial
disclosure but nevertheless presents witness testimony by affidavit or declaration
may be subject to having such testimony stricken on motion by the adverse party.
See Trademark Rule 2.121(e). Such a motion “to strike the testimony of a witness
for lack of proper or adequate pretrial disclosure may seek exclusion of the entire
testimony, when there was no pretrial disclosure ….” Trademark Rule 2.123(e)(3)(i),
37 C.F.R. § 2.123(e)(3)(i).
Opposer does not dispute that it failed to make any pretrial disclosure in this
matter. Yet, Opposer has, during its testimony period, essentially resubmitted its
notice of opposition (restyled as “Opposer’s Statement of Trial”) and exhibits
originally filed on May 3, 2017, as its testimony in chief. Arguing against having its
putative testimony and accompanying exhibits stricken, Opposer contends that its
notice of opposition “contained and disclosed the same and substantially the same
information that Opposer was to provide for pretrial disclosures to Applicant”; and,
to the extent that a document that was not included with its pleading was
submitted as part of its testimony, Opposer notes that the document “was disclosed
to the Applicant on March 6, 2018, the same day as the Opposer received the
evidence of likelihood of confusion” and, therefore, “Applicant has not been denied
any Testimony or Exhibits ….”5

5 12 TTABVUE 2-3.

Opposition No. 91234331

4
By timely filing its putative testimony and exhibits, it is clear that Opposer was
aware of the schedule in this matter, yet it failed to serve its pretrial disclosures in
accordance with that schedule. Opposer’s explanation that it already provided
Applicant with “substantially the same information that Opposer was to provide for
pretrial disclosures” is unavailing. The pretrial disclosure requirement “is an
independent requirement of the rules and not one that can be ignored simply
because some information about a testifying individual may be known by the
adverse party or parties.” Jules Jurgensen/Rhapsody, Inc. v. Baumberger, 91
USPQ2d 1443, 1445 (TTAB 2009). There is no basis for Opposer’s request that its
“Trial Testimony and Exhibits be permitted and accepted” notwithstanding the lack
of pretrial disclosure simply because they have previously been made known to
Applicant.6 Because Opposer failed to serve pretrial disclosures, including the
names of those witnesses whose testimony it intended to submit at trial, Applicant’s
motion to strike is GRANTED.7 Trademark Rule 2.123(e)(3)(i).
Opposer’s testimony period has expired and there is no evidence of record on
behalf of Opposer. Opposer did not move to reopen its testimony period and even if
it did, Opposer has offered no facts to demonstrate the excusable neglect necessary

6 Id.

7 We hasten to add that even if we were to deny Applicant’s motion to strike, Opposer’s
putative testimony and exhibits could not be considered, as Opposer has failed to properly
introduce them into the record in accordance with Trademark Rules 2.122 and 2.123.
Specifically, to the extent that Opposer intended the written submission of its President to
constitute testimony on its behalf, it was not made under oath and thus is not in the proper
form of an affidavit or declaration pursuant to Trademark Rule 2.20. Trademark Rule
2.123(a)(1); see also TBMP § 703.01(b). In addition, the proffered exhibits are not of a type
that may be made of record via notice of reliance. See Trademark Rule 2.122(g).
Opposition No. 91234331

5
to warrant a reopening of Opposer’s testimony period. Opposer, therefore, cannot
prevail in this matter. In view thereof, Applicant’s motion for judgment is
GRANTED and this matter is DISMISSED with prejudice. Trademark Rule
2.132(a).
* * *