Evidence During Testimony Period Must Be Properly Submitted

Author: Laura K. Johnson

In a recent precedential decision in Hunter Industries, Inc. v. The Toro Company, the TTAB highlighted several pitfalls surrounding the proper submission of declarations and exhibits during the testimony period.

The Board granted Hunter’s motion to strike various evidence submitted during Toro’s testimony period. First, the Board excluded 170 exhibits that Toro had mailed to the Board on a flash drive, as Trademark Rule 2.126 requires filings to be submitted on paper or electronically via ESTTA. While the Board did not strike the witness declarations submitted in conjunction with these exhibits, it did note the diminished probative value of such testimony to the extent that it referred to or relied upon the stricken exhibits.

Second, the Board found two YouTube video exhibits submitted via CD-ROM to have been submitted in an acceptable format given that ESTTA cannot accept video files. However, these exhibits were excluded under Federal Rule of Civil Procedure 37(c)(1) because they had not been produced to Hunter during the discovery period despite falling within at least one of Hunter’s requests for production. Although the untimely production of requested documents may be excused if the delay was “substantially justified or harmless,” Toro failed to provide any reason for the late production of these videos.

Finally, Toro submitted declaration testimony from seven distributors. The declarations were marked “Trade Secret/Business Confidential” under the Board’s standard protective order and thus viewable only by Hunter’s outside counsel. Non-confidential versions for Hunter’s in-house personnel were also filed which had redacted the distributers’ names, employers, locations, and signatures. Although the Board recognized Toro’s reluctance to divulge distributor information to its competitor, it held that when a party relies on declaration testimony at trial, its adversary has a fundamental right to confront the witness and inquire into his or her credibility and the facts to which he or she testifies. Given Toro’s refusal to disclose the identity of these witnesses, the Board struck the distributor declarations.

After noting that the consideration of the stricken material would not have altered its ultimate conclusion, the Board found for Hunter and sustained the opposition.

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