Expert Testimony Excluded as Legal Opinion
Expert witnesses may not provide conclusions equivalent to legal opinions, a Florida federal judge has ruled in partially excluding the testimony of a Trademark expert witness.
In Royal Palm Properties, LLC, v. Pink Palm Properties, LLC, (No. 9:17-cv-80476-RLR, Doc. 160, S.D. Fla., 2018 U.S. Dist.), both plaintiff and defendant are real estate brokerage companies in the same area of Florida. After Royal Palm learned that Pink Palm had used the term “Royal Palm Properties” on its website, Royal Palm demanded that the trademark be removed, which Pink Palm complied with. Nonetheless, Royal Palm filed suit against Pink Palm, asserting trademark misuse and seeking damages. Pink Palm counterclaimed trademark cancellation.
Royal Palm tried to have the counterclaim dismissed, but U.S. Judge Robin L. Rosenberg found that a portion of Pink Palm's counterclaim was adequately supported. Justice Rosenberg did bar Pink Palm from asserting that “Royal Palm Properties” was confusingly similar to the “Royale Palms” marks.
Pink Palm also claimed that “Royal Palm Properties” mark was invalid as merely descriptive, as a geographic term.
Royal Palm's expert witness opined that the trademark was instead suggestive and therefore “inherently distinctive,” citing Knights Armament Co. v. Optical Systems Technology, Inc., 654 F.3d 1179, 1188 (11th Cir. 2011).
Justice Rosenberg rejected Pink Palm's claim the mark was merely descriptive, citing case law that “even a descriptive trademark is still entitled to protection.” (Aronowitz v. Health-Chem Corp., 513 F.3d 1229, 1239 (11th Cir. 2008)). Given Royal Palm's opinion evidence of a suggestive trademark, the judge rejected Pink Palm's arguments that the trademark is “unprotectable.”
Being unable to invalidate the mark by category, Pink Palm presented its trademark expert witness, Mark Stein, an attorney, who opined that Royal Palm had misled the Patent Office in its trademark application, failing to disclose that “Royal Palm“ identifies a geographic location, and as a result was improperly granted a trademark.
Royal Palm moved to strike or disqualify Stein as an expert witness, arguing that he was “akin to a co-counsel” arguing legal theories to the jury.
Justice Rosenberg found that cancellation of the trademark was a decision for the jury, but agreed in part with Royal Palm that Stein's testimony was problematic. If Stein explained to the jury why the Trademark Office should have rejected the trademark application, “he would be testifying to the legal conclusion that the jury must make.” Expert witnesses may not testify to the legal implications of conduct, the judge found, citing Montgomery v. Aetna Cas. & Sur. Co., 898 F.2d 1537, 1541 (11th Cir. 1990).
As well, Justice Rosenberg found that if Stein were allowed to testify as to the various grounds upon which an application could be denied, he would be instructing the jury, which is the court's role. And, Stein could no longer opine about whether the Trademark Office was “misled” as the court had previously dismissed Pink Palm's counterclaims premised on fraud and deceit.
In its defense, although Pink Palm could not find “a single case in which an expert testified on trademark applications or the propriety of the Trademark Office's granting of a trademark,” it cited two patent cases to support its view that Stein's testimony would be appropriate.
Justice Rosenberg found the cited cases unsupportive, except that General Battery Corp. v. Gould, Inc., 545 F. Supp. 731, 758 n.30 (D. Del. 1982), did admit expert witness opinions on general procedure.
Justice Rosenberg excluded Stein's testimony on whether or not Royal Palm's trademark application should have been denied, and excluded any testimony regarding deception or fraud. The judge did allow Stein to testify about Trademark Office procedures generally, the lack of certain information in the application, and potentially any testimony Stein might offer to rebut Royal Palm's expert witness.