The following are some citations and discussion related to the admissibility of expert testimony regarding third party use of a trademark or legal conclusions that can be reliably drawn from trademark search reports.
Admissibility of testimony by a non-lawyer on trademark law issues
- Federal rules do not require that an expert have a law degree in order to qualify as an expert witness. A witness' lack of specialization does not affect the admissibility of an opinion, only its weight. First Savings Bank v. U.S. Bancorp, 117 F. Supp. 2d 1078, 1083-84 (D. Kan. 2000). "Courts have recognized that expertise may be acquired through practical experience, academic experience or simply through observing the work of others."
- The test of reliability is a flexible one and the standard for reliability "is not that high." In Re TMI, 193 F.3d 613, 665 (3d Cir. 1999). The main goal is to exclude "junk science" and ensure that expert testimony is based on sound methods and valid procedures. Lentz v. Mason, 32 F. Supp. 2d 733, 745 (D.N.J. 1999)(citing 4 WEINSTEIN'S EVIDENCE §702.05)). If the proposed opinions and conclusions are based on "good grounds" then the expert testimony is reliable. See In Re Paoli R.R. Yard PCB Litig., 35 F.3d 717, 748(3d Cir. 1994).
- To determine whether good grounds are present, the court must examine the expert's conclusions to see if they could reliably flow from the facts known to the expert and the methodology used. Heller v. Shaw Indus., Inc., 167 F.3d 146, 153 (3d Cir. 1999).
- The focus is on the reliability of the methodology as opposed to the merits of the conclusions reached. Paoli, 35 F.3d at 744. A trial court has wide latitude in deciding how to determine reliability, just as it has considerable discretion with respect to the ultimate reliability determination. Daubert v. Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579, 113 S. Ct. 2786, 125 L. Ed. 2d 469 (1993),at 1176. However, "the rejection of expert testimony is the exception rather than the rule." Fed. R. Evid. 702, adv. comm. Notes (2000).
- Even after Daubert, "the trial court's role as a gatekeeper is not intended to serve as a replacement for the adversary system."(quoting United States v. 14.38 Acres of Land, 80 F.3d 1074, 1078 (5th Cir. 1996). "Vigorous cross-examination, presentation of contrary evidence, and careful instruction on the burden of proof are the traditional and appropriate means of attacking shaky but admissible evidence." Daubert, 113 S. Ct. at 2798; see also Paoli, 35 F.3d at 744 ("the grounds for the expert's opinion merely have to be good, they do not have to be perfect.")
- "The admissibility test does not turn on whether the opinion has the best foundation or whether it is supported by the best methodology, or unassailable research." In Re TMI, 193 F.3d at 665. Rather, the test is whether the particular opinion is based on valid reasoning and reliable methodology. Main Street Mortgage, Inc. v. Main Street Bancorp., Inc., 158 F. Supp. 2d 510, 515 (E.D. Penn. 2001).
- Evidence of third-party registrations and use of the mark is relevant to the scope of protection to be afforded a particular mark. See First Sav. Bank v. First Bank System, 101 F.3d 645, 654 (10th Cir. 1996)(citing Freedom Sav. & Loan Ass'n. v. Way, 757 F.2d 1176, 1182 (11th Cir. 1985) where consideration of third-party usage contributed to finding that FREEDOM was weakly protected; Sun Banks of Fla., Inc. v. Sun Fed. Sav. & Loan Ass'n., 651 F.2d 311, 316 (5th Cir. 1981) where extensive third-party use of SUN was impressive evidence that there would be no likelihood of confusion between Sun Banks and Sun Federal.)