Jules Jurgensen/ Rhapsody, Inc.v.Peter Baumberger

Trademark Trial and Appeal Board

Jul 6, 2009

No. 92048667 (T.T.A.B. Jul. 6, 2009)

Mailed: July 6, 2009
al
Cancellation No. 92048667

Jules Jurgensen/Rhapsody, Inc.

v.

Peter Baumberger

Before Seeherman, Bucher, and Cataldo,
Administrative Trademark Judges.

By the Board:

This case now comes up for consideration of
respondent’s motion (filed April 7, 2009) to strike the
testimony of petitioner’s president, Morton Clayman. The
motion is fully briefed.
According to the record, on March 4, 2009, the opening
day of petitioner’s main testimony period, petitioner first
served respondent with notice that it intended to take the
testimony deposition of Mr. Clayman and would rely on such
testimony at trial. The testimony deposition of Mr. Clayman
took place on March 18, 2009. Respondent’s counsel attended
via telephone and cross-examined the witness under protest,
reserving the right to object to Mr. Clayman’s testimony on
the ground that neither his identity as a witness nor the
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS OPINION IS A
PRECEDENT OF THE TTAB
Cancellation No. 92048667
2
substance of his testimony was disclosed to respondent prior
to the opening of trial.
In support of his motion, respondent argues that
petitioner failed to identify Mr. Clayman as a witness in
its initial disclosures;1 that petitioner also failed to
identify Mr. Clayman as a witness in its pretrial
disclosures; that such failure has “seriously prejudiced
Respondent’s defense of this action”; and that, therefore,
the Board should strike the testimony of Mr. Clayman in its
entirety.
In response, petitioner contends that Mr. Clayman is
the “sole witness testifying on behalf of Petitioner” and
“his testimony is critical to Petitioner’s case”; that
despite the fact that respondent did not take Mr. Clayman’s
deposition prior to trial, he was given an opportunity to
cross-examine Mr. Clayman during the testimony deposition
and the scope of such cross-examination covered “a wide
range of topics and far exceeded the scope of the direct
examination”; that respondent was aware of the existence of
Mr. Clayman prior to the testimonial deposition of March 18,
2009 “but never once inquired about his availability for

1 A party need not, through its mandatory initial disclosures,
identify particular individuals as prospective trial witnesses,
per se, but must identify “each individual likely to have
discoverable information that the disclosing party may use to
support its claims or defenses.” See Fed. R. Civ. P. 26(a)(1),
made applicable to this proceeding by Trademark Rule 2.116(a).
Cancellation No. 92048667
3
deposition”;2 and that respondent had “full knowledge of the
high likelihood that Mr. Clayman would testify for the
Petitioner.”
In reply, respondent argues that it relied on
petitioner’s lack of disclosure of witnesses to indicate
that petitioner intended to introduce only documentary
evidence at trial and not witness testimony and that it
would have “considered different discovery and trial
strategies had Petitioner disclosed Mr. Clayman’s identity.”
Trademark Rule 2.121(e) provides, in pertinent part,
no later than fifteen days prior to the
opening of each testimony period … the
party scheduled to present evidence must
disclose the name and, if not previously
provided, the telephone number and
address of each witness from whom it
intends to take testimony, or may take
testimony if the need arises, general
identifying information about the
witness, such as relationship to any
party, including job title if employed
by a party, or, if neither a party nor
related to a party, occupation and job
title, a general summary or list of
subjects on which the witness is
expected to testify, and a general
summary or list of the types of
documents and things which may be
introduced as exhibits during the
testimony of the witness ….

Individuals identified through initial disclosures therefore
could reasonably be viewed as possible witnesses.
2 Petitioner recounts “seven times” or instances which
demonstrate that respondent “was aware” of Mr. Clayman, including
the first time when respondent received the petition to cancel
signed by Mr. Clayman and the second time when respondent
received the amended petition to cancel which was similarly
signed by Mr. Clayman.

Cancellation No. 92048667
4
Trademark Rule 2.123(e)(3) provides, in part, that if
pretrial disclosures are improper or inadequate with respect
to a witness,
an adverse party may cross-examine that
witness under protest while reserving
the right to object to the receipt of
the testimony in evidence. … 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….

(emphasis added). The rule further provides that such a
motion to strike the testimony of a witness “will be decided
on the basis of all the relevant circumstances.”
The requirement for parties to make pretrial
disclosures, which are provided for in Fed. R. Civ. P.
26(a)(3), was introduced into Board inter partes proceedings
by amendments to the Trademark Rules, and is applicable to
all proceedings which commenced on or after November 1,
2007.3 See Notice of Final Rulemaking, Miscellaneous
Changes to Trademark Trial and Appeal Board Rules, 72 Fed.
Reg. 42242 (Aug. 1, 2007). Such disclosures allow parties
to know prior to trial the identity of trial witnesses, thus
avoiding surprise witnesses. See id. at 42257-58. These
disclosures require that a party, in advance of the
presentation of its testimony, inform its adversary of the
names of, and certain minimal identifying information about,

3 The instant proceeding was filed on December 26, 2007.
Cancellation No. 92048667
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the individuals who are expected to, or may, if the need
arises, testify at trial. See id. at 42257.
Petitioner’s pretrial disclosures were due on February
16, 2009. Respondent alleges that petitioner failed to
serve pretrial disclosures on respondent, but that on March
11, 2009, petitioner served a list of several documents it
had produced which respondent construed as “a sort of
Pretrial Disclosure.”4 Respondent asserts that petitioner
never identified Mr. Clayman as a potential witness in that
list of presumptive “pretrial disclosures.” Petitioner does
not deny these allegations in its responsive brief.
Respondent further asserts that petitioner failed to
identify Mr. Clayman as a witness in its initial
disclosures. Respondent asserts that it only learned of
petitioner’s intent to call Mr. Clayman when it received
notice of his testimony deposition on or about March 4,
2009. Petitioner has provided no explanation as to why it
did not identify Mr. Clayman as a knowledgeable individual
in initial disclosures or as a witness in pretrial
disclosures.
Under the amended Trademark Rules applicable to this
proceeding, petitioner was required to name in its pretrial
disclosures any witness, including Mr. Clayman, from whom it

4 The list was actually served after the opening of petitioner’s
main testimony period and therefore cannot actually be viewed as
a pretrial disclosure.
Cancellation No. 92048667
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intended to take testimony, or even might take testimony if
needed. Petitioner’s assertion that Mr. Clayman’s testimony
is “critical” to its case indicates that petitioner very
likely intended to depose this witness at trial, and
certainly should have considered him a possible witness.
Given this statement, it is also surprising that Mr. Clayman
was not identified in petitioner’s initial disclosures, and
we must consider this fact as one of the relevant
circumstances to be considered in determining whether to
strike Mr. Clayman’s testimony deposition. That is,
petitioner’s failure to identify Mr. Clayman in its initial
disclosures deprived respondent of the opportunity to seek
discovery of Mr. Clayman.
Petitioner’s arguments as to why Mr. Clayman’s
testimony should now be considered are not persuasive.
Petitioner failed to comply with the rules or to provide a
satisfactory explanation as to why it did not comply with
them. Petitioner’s contention that any prejudice to
respondent was due to respondent’s own inaction, in that
respondent failed to depose Mr. Clayman during discovery,
and is not due to any action by petitioner, is not well-
taken. Petitioner’s further assertion that respondent “was
aware of Mr. Clayman” prior to petitioner’s taking of his
testimony deposition through such actions as Mr. Clayman’s
signing the petition to cancel cannot substitute for
Cancellation No. 92048667
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petitioner’s disclosing Mr. Clayman as a witness. Cf.
Trademark Rule 2.121(e) (“Pretrial disclosure of a witness
under this subsection does not substitute for issuance of a
proper notice of examination under § 2.123(c) or §
2.124(b).”), which illustrates that a pretrial disclosure 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. While Rule 2.121(e) contemplates that the
telephone number and address of a witness (i.e., contact
information) may previously have been provided to the party
or parties receiving a disclosure and, therefore, need not
be repeated, the disclosure of the name of each prospective
witness still must be made, along with identifying
information, a summary of subjects on which the witness will
or may testify and a summary of the types of documents or
exhibits that will or may be introduced during the
testimony.
After considering the relevant circumstances, we find
that petitioner has not complied with Trademark Rule
2.121(e), and has not provided a satisfactory explanation
for failing to comply with that rule. Because Mr. Clayman
is the type of surprise witness that pretrial disclosure
practice is intended to discourage, respondent’s motion to
Cancellation No. 92048667
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strike is hereby granted. The testimony of Mr. Clayman in
its entirety is hereby stricken.5
Due to the delay in handling this motion, the Board
finds it appropriate to reset the remaining dates as
follows:
Defendant's Pretrial Disclosures 7/24/2009
Defendant's 30-day Trial Period Ends 9/7/2009
Plaintiff's Rebuttal Disclosures 9/22/2009
Plaintiff's 15-day Rebuttal Period Ends 10/22/2009
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 of
completion of the taking of testimony. Trademark Rule
2.125.
Briefs shall be filed in accordance with Trademark Rule
2.128(a) and (b). An oral hearing will be set only upon
request filed as provided by Trademark Rule 2.129.

5 Petitioner is reminded that it cannot use its rebuttal period
to submit testimony that is properly part of its case in chief.
See Trademark Rule 2.121(b)(1) and Wet Seal Inc. v. FD Mgmt.
Inc., 82 USPQ2d 1629 (TTAB 2007).