Expert witnesses are commonly used in litigation. Typically, an opening expert report is served by one party, and then the other party serves a rebuttal report from its own expert.

At the TTAB, a sur-rebuttal expert report may be permitted “under appropriate circumstances, . . .as long as a party that wishes to provide a sur-rebuttal expert report promptly seeks leave to do so” and if consideration of the sur-rebuttal report would “serve the interest of fairness [and] benefit the Board in its ability to make a just determination of the merits of this case.” Newegg Inc. v. Schoolhouse Outfitters, LLC, 118 USPQ2d 1242, 1244 (TTAB 2016). But “continuously allowing expert rebuttal would create a situation ‘where there would be no finality to expert reports.'” Id.

But what about a sur-sur-rebuttal, which is a response to a response to an initial response?

Sur-Sur-Rebuttal Not Permitted

Now, the TTAB has held that “sur-sur-rebuttal expert reports will not be permitted under any circumstances” (emphasis in original). Monster Energy Co. v. Coulter Ventures LLC, Opp. No. 91233515, 2023 USPQ2d ____ (TTAB Aug. 7, 2023).

Monster Energy opposed Coulter Ventures's MONSTER LITE application for its line of fitness products.

Expert Reports

Monster served the expert report of Sara Parikh, PhD (“Parikh Report”), where Dr. Parikh offered survey evidence allegedly demonstrating a significant overlap of consumers of the parties' goods offered under their respective marks.

Coulter Ventures did not disclose an expert by the deadline, but the TTAB allowed Coulter Ventures thirty days to disclose any planned rebuttal expert report. See 37 C.F.R. § 2.120(a)(2)(iii) (“Upon disclosure by any party of plans to use expert testimony . . . the Board . . . may issue an order regarding expert discovery and/or set a deadline for any other party to disclose plans to use a rebuttal expert.”).

Coulter Ventures then served a rebuttal to the Parikh report prepared by David Franklyn (“Franklyn Rebuttal”), where Mr. Franklyn critiqued Dr. Parikh's survey and offered a likelihood of confusion survey utilizing the universe identified in the Parikh Report.

Monster did not argue that Mr. Franklyn's likelihood of confusion survey was an untimely disclosure of a non-rebuttal expert. Instead, Monster served a sur-rebuttal report prepared by Dr. Parikh (“Parikh Sur-Rebuttal”), which critiqued the stimuli used in Mr. Franklyn's survey. Monster, however, did not obtain leave of the Board to serve this sur-rebuttal report.

Instead of moving to strike the sur-rebuttal as improper, Coulter Ventures thereafter served a sur-sur-rebuttal report prepared by Mr. Franklyn (“Franklyn Sur-Sur-Rebuttal”), wherein Mr. Franklyn offered a new likelihood of confusion survey that altered the stimuli from his initial survey to account for Dr. Parikh's criticism.

Monster then moved to strike this sur-sur-rebuttal report as improper.

Motion to Strike Sur-Sur-Rebuttal Granted

The TTAB granted the motion to strike the Franklyn Sur-Sur-Rebuttal; but also held that the Parikh Sur-Rebuttal would be given no consideration unless Monster sought and obtained leave to serve it.

Monster then sought leave to serve the Parikh Sur-Rebuttal because, otherwise, it would have no “opportunity to respond to the likelihood of confusion survey and associated opinions” in the Franklyn Rebuttal.

Because the Franklyn Rebuttal includes “new evidence in the form of a different survey performed according to a different methodology on the issue of likelihood of confusion,” Newegg, 118 USPQ2d at 1244, the TTAB found it would serve the interest of fairness to allow additional expert testimony opining on the survey in the Franklyn Rebuttal.

Specifically, the only portion of the Parikh Sur-Rebuttal that the Board allows is a critique of the Franklyn Rebuttal, with no presentation of new evidence. Any portion that constitutes bolstering of the Parikh Report will not be considered. See Gemological Inst. of Am., Inc. v. Gemology Headquarters Int'l, LLC, 111 USPQ2d 1559, 1561-62 (TTAB 2014) (a report that seeks to clarify an expert's earlier opinions and rebut contradictory testimony is bolstering). A sur-rebuttal report may not be used to bolster previously disclosed opinions. See Newegg, 118 USPQ2d at 1244. Cf. Empresa Cubana Del Tabaco v. Gen. Cigar Co., 2020 USPQ2d 10988, at *3 (TTAB 2020) (Fed. R. Civ. P. 26(e) does not permit an expert to bolster previously disclosed opinions); ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1238-39 (TTAB 2015); Gemological Inst. of Am., 111 USPQ2d at 1561-62. With these limitations, the admission of the Parikh Sur-Rebuttal does not raise the specter of an endless series of rebutting expert reports. See Newegg, 118 USPQ2d at 1244.

With respect to the subsequent Franklyn Sur-Sur-Rebuttal, the TTAB held that sur-sur-rebuttal expert reports will not be permitted under any circumstances, and cited Newegg's rationale that continuously allowing expert rebuttal would create a situation where there would be no finality to expert reports and would amount to unlimited expert opinion presentation. See also Houle v. Jubilee Fisheries, Inc., 2006 U.S. Dist. LEXIS 1408, 2006 WL 27204, at *2 n.4 (W.D. Wash. Jan. 5, 2006)). See also Maker's Mark Distillery, Inc. v. Spalding Grp., Inc., 2022 U.S. Dist. LEXIS 228509, 2022 WL 17824427, at *12 (W.D. Ky. Dec. 20, 2022) (denying leave to serve sur-sur-rebuttal because “[t]he exchange of expert reports . . . cannot continue in perpetuity.”).

The TTAB further noted that “a sur-sur-rebuttal should never be necessary” because the TTAB would not permit leave for a sur-rebuttal report that contains new evidence or that would otherwise necessitate a response from the other party in the interest of fairness.

A bright-line rule that sur-sur-rebuttal expert reports will not be permitted under any circumstances provides clarity for parties preparing expert testimony that there will be finality to the exchange of expert opinions. Any further challenges to the opposing party's expert testimony may be addressed through deposition and cross-examination of that expert.

The TTAB found that the Franklyn Sur-Sur-Rebuttal “is neither an untimely disclosure nor a supplemental report, but rather a sur-sur-rebuttal that seeks to get the last word in the battle of the experts.”

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