Testimony on Reasons USPTO Should Have Rejected Registration Excluded Under Daubert

The court partially granted plaintiff’s Daubert motion to exclude the testimony of defendant’s expert because the testimony was on the ultimate legal issue to be decided by the fact finder. “Here, the jury will have to decide whether Plaintiff’s trademark should be cancelled. In making that determination, the grounds for such a cancellation will be any ground that the Trademark Office could have used to deny Plaintiff’s application. That is precisely the thrust of [the defense] expert report. If [the defense expert] were to explain to the jury why the Trademark Office should have rejected Plaintiff’s trademark application, [the expert] would be testifying to the legal conclusion that the jury must make . . . . Similarly problematic, if [the expert] were to testify, in the abstract, as to various grounds upon which an application could be denied, [the expert] would be instructing the jury on the law since the jury will be permitted to premise its legal determination on ‘any reason that would have been sufficient to deny the initial registration.'”

Royal Palm Properties, LLC v. Pink Palm Properties, LLC, 9-17-cv-80476 (FLSD 2018-05-10, Order) (Robin L. Rosenberg)

2018-05-14T11:37:02+00:00May 14th, 2018|Docket Report, Trademark|