Intellectual Property Expert Witness’ Testimony About Trademark Custom and Usage Admitted
Posted on November 1, 2024 by Expert Witness Profiler
This is a trademark infringement case involving the trademarked phrase “Freedom Pop”. Plaintiff Proccor Pharmaceuticals, Inc. (“Proccor”) contended that Defendant GAT Sports infringed upon its alleged trademark for a “Freedom Pop” flavored Pre-Rx pre-workout supplement. GAT Sports essentially argued that the phrase was used in a non-trademark, descriptive, way to describe the flavor of its product.
The Plaintiff has retained Neil Smith as an expert to testify to various matters. Smith proposed to testify about the following:
1. The Freedom Pop trademark application was not for a flavor;
2. The specimen submitted for the Freedom Pop trademark application was filed in a procedurally proper manner;
3. Proccor’s use of the trademark on the product was a legitimate trademark use;
4. The requirements for trademarking Freedom Pop were met and the USPTO did not object to the specimen of use;
5. The Freedom Pop trademark is not a flavor trademark; and
6. The use of trademark in a list of flavors for “marketing purposes” “does not a flavor trademark make”.
Defendants requested that this Court enter an order precluding Plaintiff
from offering at trial the testimony and opinions proffered by Neil Smith.
Intellectual Property Expert Witness
A former judge with the Patent Trial and Appeal Board of the U.S. Patent and Trademark Office, Neil Smith has been an officer in many legal organizations, including President of the San Francisco Patent and Trademark Law Association, a member of the Board of Directors of the American Intellectual Property Law Association, and a founder and President of the Bay Area Intellectual Property American Inn of Court. He served on several ADR panels and is trained in arbitration, mediation, and early neutral evaluation.
He brings a wealth of expertise across a wide spectrum of intellectual property matters.
Discussion by the Court
Defendants argued that Smith’s opinions are not helpful to the trier of fact in resolving a fact in dispute, that the opinions are inadmissible legal conclusions, that the opinions stand athwart the factual record, and that the opinions attempt to speculate about a state of mind.
Plaintiff observed that the Defendants’ motion is “difficult to follow because it does not cite to or quote the portions of Smith’s expert report that contain the opinions Defendants seek to exclude. Instead, it sweeps with a very broad, vague brush leaving the Court and Plaintiff guessing exactly what is sought to be excluded.”
Qualifications
A review of Smith’s background and the substance of his report reveals that he is a lawyer admirably trained in intellectual property law; thoroughly experienced in trademark practice and procedure; and familiar with both intellectual property disputes and the customs and practices prevalent in applying for, and granting, trademarks for a variety of products, including words, flavors, and smells. Further, Smith’s report reveals that his opinions address practice, procedure, custom, usage, and results common and accepted in the pertinent industry. Therefore, the Court held that his opinions are based directly on his training, experience, and observation and evince the necessary attributes of reliability.
Legal Conclusions
Especially because jurors are unfamiliar with the language, the procedure, and the practice of protecting a trademark, a properly qualified expert can testify about practice, procedure, custom, and usage in the industry, for which Smith is amply qualified. Of course, whenever a lawyer testifies about matters touching the law, the examiner must properly phrase the questions and the witness must properly constrain his responses to avoid offering an improper legal conclusion; instructing the jury on the law is the exclusive province of the judge. But providing orientation to the topic of, and the context for, the dispute, even though both occur within confines described by the law, is most helpful to a jury. The Court held that describing custom and usage in a pertinent industry and describing typical means and methods (that is, practice and procedure) is not the illicit offering of a legal opinion or conclusion.
Speculation
As to the objection about Smith’s opinions allegedly conflicting with the record, an expert may assume facts stated by the examiner and offer an opinion based on the assumed facts; if the assumed facts are disproven and rejected by the jury, the expert’s opinion likely suffers rejection. In other words, the Court held that the issue is the weight of the opinion and the likely success of the opinion but not the admissibility of the opinion.
The Court observed that the Defendants’ objection that Smith’s opinions address a “state of mind” and are therefore inadmissible receives only perfunctory treatment in the motion and remains ambiguous. But an accusation that an opinion is “untethered to reality,” although gratifying to the accuser, is not easily comprehensible when directed to the opinions offered by Smith in his report. For example, Smith observes that certain holders of certain marks advertise and sell their products using terms in the sense of ordinary usage to convey a message to the market and that the usage is not controlling over the legality of a trademark or whether something is, for trademark purposes, for example, a flavor or a distinct product, regardless of flavor.
In all events, the Court decided that Smith neither proposes to, nor will the law permit him to, speculate about someone else’s state of mind, but he may testify about trademark custom and usage in the industry, for which he is at least sufficiently qualified.
Held
The Court denied the Defendants’ motion in limine to exclude the testimony of Plaintiff’s expert Neil Smith.
Key Takeaways:
- Describing custom and usage in a pertinent industry and describing typical means and methods (that is, practice and procedure) is not the illicit offering of a legal opinion or conclusion.
- Moreover, Smith’s opinions are based directly on his training, experience, and observation and evince the necessary attributes of reliability.
Case Details:
| Case Caption: | Proccor Pharmaceuticals, Inc. V. World Health Products, Llc Et Al |
| Docket Number: | 8:22cv2227 |
| Court: | United States District Court, Florida Middle |
| Order Date: | September 30, 2024 |
