Florida Record

Wednesday, October 23, 2019

Portion of expert testimony won't be accepted in court amid ongoing trademark case

By Charmaine Little | May 15, 2018

MIAMI -- The question of whether an expert witness’ testimony should be considered in a trademark case was answered according to a May 10 opinion in the U.S. District Court for the Southern District of Florida.

A property group was partially granted its amended motion to fisqualify and/or exclude an expert from its case against a similar company.

Defendant, Pink Palm Properties LLC, obtained an attorney to serve as an expert in its case after Royal Palm Properties LLC filed a lawsuit against it. Pink Palm stated that the lawyer, Mark Stein, is said to be a type of co-counsel for Pink Palm. Royal Palm argued the attorney favored the defendant when it comes to its legal beliefs. Pink Palm requested that the court remove Stein’s expert testimony from the case.

Stein stated Royal Palm did not say that the U.S. Patent and Trademark case that the “Royal Palm” part of its trademark refers to a geographic location, Royal Palm did not offer sufficient evidence “of a prior registration” and added that it “failed to provide any evidence of acquired distinctiveness.”Stein added that Royal Palm omitted some if its material and relevant information, concluding that if an examiner considered the above-mentioned factors, Royal Palm would not have been granted its trademark.

The district court suggested Stein’s statement that Royal Palm “misled” the Patent Office do not relate to this case as the court already had dismissed Pink Palm’s fraud and deceit with prejudice counterclaims. The court also pointed out that Stein said a number of his statements were based on his own opinion.

When it comes to whether Royal Palm’s trademark application should have been denied, the court decided to exclude Stein’s testimony as well as any comments related to allegations of fraud or deception, granting a portion of the plaintiff’s motion.

The court also challenged any of Stein’s testimony regarding his arguments that the plaintiff omitted material it submitted to the Trademark Office. It considered testimony regarding that this could involve the claims that the court already tossed out with prejudice. The court denied Royal Palm's request to exclude this portion of the testimony without prejudice.

The court accepted general testimony from Stein regarding Trademark Office policies and procedures as well as any testimony that could challenge Royal Palm’s expert witness.

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U.S. District Court for the Southern District of Florida