Trademark Expert Witness testimony Allowed in Part

Plaintiff filed suit against defendant for copyright and trademark infringement.  Plaintiff hired a Trademarks Expert Witness to provide expert testimony.  The motion was challenged by the defendant under Daubert.  The court partially allowed the testimony to proceed.

Facts:  This case (Design Ideas Ltd v. Meijer, Inc. et al – United States District Court – Central District of Illinois – July 23rd, 2018) involves a claim of copyright infringement, unfair competition, and violations of the Digital Millenium Copyright Act.  There are also numerous state claims including unfair competition and breach of contract.  To assist with their case, the plaintiff hired Trademarks Expert Witness B. Brett Heavner to provide a report and testimony.  The defendant has filed a motion to exclude this expert witness from testifying.

Discussion:  In his report, Heavner provides an overview of PTO trademark practices and procedures.  In addition, Heavner provides an opinion on the meaning of the PTO examining officer’s action in relation to plaintiff’s registration application for the SPARROWCLIPS mark.

The defendants do not challenge the methodology used by Heavner, nor do they argue that he is not qualified to offer his expert opinion in this case.  They allege that his testimony contains inadmissible legal conclusions and will not be helpful to the jury in deciding any facts at issue in this case.  The plaintiff’s retort by stating that Heavner does not offer his opinion about the distinctiveness of the SPARROWCLIPS mark but only the conclusions of the PTO examining attorney.  In addition, they contend that Heavner’s testimony does not consist of legal conclusions that would be inadmissible under Daubert, but relates to statements gotten from the PTO’s trademark application process and the PTO’s exmination of the mark.

The court opines that Heavner’s testimony regarding trademark practices and procedures of the PTO would be helpful to the trier of fact in this case, who is likely to be uninformed on the subject of trademark applications.  In addition, the court rules that it will allow Heavner to testify on other marks that have been registered.

To be sure, the court opines that Heavner’s conclusion about the examining attorney will not be helpful to the trier of fact because the court has already found, on summary judgment, that the PTO found that the mark required distinctiveness.  Therefore,  the court concluded, Heavner will be allowed to testify regarding PTO trademark practice and procedure, but not the other parts of his report.

Conclusion:  The motion to exclude the expert witness testimony of B. Brett Heavner is granted in part and denied in part.