Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA849270
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`Filing date:
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`09/29/2017
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding
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`91210158
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`Party
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`Correspondence
`Address
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`Submission
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`Filer's Name
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`Filer's email
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`Signature
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`Date
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`Attachments
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`Plaintiff
`Larry Pitt & Associates, P.C.
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`JACQUELINE M LESSER
`BAKER & HOSTETLER LLP
`2929 ARCH STREET, CIRA CENTRE 12TH FLOOR
`PHILADELPHIA, PA 19104-2891
`UNITED STATES
`Email: jlesser@bakerlaw.com, jdale@bakerlaw.com, trademark-
`sphi@bakerlaw.com, kblumer@bakerlaw.com
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`Opposition/Response to Motion
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`Jacqueline M. Lesser
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`jlesser@bakerlaw.com, jwatkins@bakerlaw.com, jdale@bakerlaw.com, bhip-
`docket@bakerlaw.com
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`/Jacqueline M. Lesser/
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`09/29/2017
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`Opposers Supplemental Opposition to Applicants Motion to Strike.pdf(107711
`bytes )
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Opposition No. 91210158
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`LARRY PITT & ASSOCIATES, P.C.
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`Opposer,
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`v.
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`LUNDY LAW LLP
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`Applicant
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`OPPOSER’S SUPPLEMENTAL OPPOSITION TO APPLICANT’S AMENDED
`MOTION TO STRIKE PORTIONS OF ROSS FISHMAN DEPOSITION
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`On December 30, 2016, Applicant filed an Amended Motion to Strike the testimony of
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`Opposer’s expert witness, Ross Fishman. Opposer filed its Opposition to the Amended Motion
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`to Strike on February 2, 2017.1 As noted by the Board, the motion was deferred because a
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`motion to strike is considered by the Board at final decision, when it reviews the deposition
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`transcript. Genesco Inc. v. Martz, 66 U.S.P.Q.2d 1260, 1263 (T.T.A.B. 2003). More typically, a
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`motion to strike is appended to the parties’ trial brief. Because certain of the arguments made by
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`Applicant are mooted by the parties’ additional filings or maintained differently (if at all) in
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`Applicant’s trial papers, Opposer hereby supplements its earlier response.
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`1 Applicant initially filed a motion to strike immediately after Ross Fishman’s deposition, without benefit of even
`the testimonial transcript, and refiled its motion upon receipt of the transcript.
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`611376085.1
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`I.
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`ROSS FISHMAN IS QUALIFIED TO GIVE THE OPINIONS CONTAINED IN
`HIS AMENDED EXPERT REPORT
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`Under Rule 702 of the Federal Rules of Evidence (“F.R.E.”), “a witness who is qualified
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`as an expert by knowledge, skill, experience, training, or education may testify in the form of an
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`opinion or otherwise if:
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`(a) the expert’s scientific, technical, or other specialized knowledge will help the trier of
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`fact to understand the evidence or determine a fact in issue;
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`(b) the testimony is based on sufficient facts or data:
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`(c) the testimony is the product of reliable principles and methods; and
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`(d) the expert has reliably applied the principles and methods to the facts of the case.”
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`F.R.E. 702.
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`“The fields of knowledge which may be drawn upon are not limited merely to the
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`‘scientific’ and ‘technical’ but extend to all ‘specialized’ knowledge. Similarly, the expert is
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`viewed, not in a narrow sense, but as a person qualified by ‘knowledge, skill, experience,
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`training or education.’ Thus, within the scope of the rule are not only experts in the strictest
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`sense of the word, e.g., physicians, physicists, and architects, but also the large group sometimes
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`called ‘skilled’ witnesses.” Notes of Advisory Committee on Proposed Rules, F.R.E. 702. It is
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`the task of the trier of fact under F.R.E. 104 to ensure that the expert’s testimony both rests on a
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`reliable foundation and is relevant to the task at hand. Daubert v. Merrell Dow Pharmaceuticals,
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`509 U.S. 579, 592 (1993). Under Daubert, a case that dealt specifically with scientific experts,
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`tested scientific hypothesis and peer review were factors that contributed to the reliability of an
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`expert – however, the test of reliability is “flexible,” and Daubert’s list of specific factors neither
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`necessarily nor exclusively applies to all experts or in every case. Id. at 594-595; see also
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`Kumho Tire Co. v. Carmichael, 526 U.S. 137, 148 (1999). “Rather, the law grants a district
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`court the same broad latitude when it decides how to determine reliability as it enjoys in respect
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`to its ultimate reliability determination.” Kumho Tire Co., 526 U.S. at 142. The trial judge, and
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`here, the Board, is gatekeeper, subject to F.R.E. 104.
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`At issue is Lundy Law’s advertisements for legal services in which it uses INJURED?
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`REMEMBER THIS NAME 1-800-LUNDYLAW for its marketing and whether Lundy Law uses
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`REMEMBER THIS NAME to designate its legal services. Sortman Discovery Tr. 54:13-24.
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`This is an issue of fact. In re Advert. & Mktg. Dev., Inc., 821 F.2d 614, 621 (Fed. Cir. 1987)
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`(“Whether a mark has been used to identify a particular type of service is a question of fact
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`reviewable under the clearly erroneous standard.”). Mr. Fishman is offered to explain to the fact-
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`finder how an advertisement serves as marketing materials. This is an appropriate topic for his
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`testimony because Mr. Fishman is a branding and marketing expert. Fishman Tr. 66:2-6;
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`Fishman Amended Expert Report (“Fishman Report”) at 1. He is a member of the Legal
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`Marketing Association and has been awarded its Best of Show award five times for his creative
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`marketing campaigns. Fishman Report at 2. He has worked with over 150 law firms. Id. He
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`has been published in numerous marketing and legal journals and has written recurring columns
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`in legal, marketing, and law practice management publications. Id. at 3. He has conducted over
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`250 marketing training programs for lawyers and marketers. Id. at 2. The Board should accept
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`the details of his qualifications. He has testified to all of these awards, with the ability of the
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`Applicant’s counsel to cross examine him.2 See, e.g., UMG Recordings Inc. v. Mattel Inc., 100
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`U.S.P.Q.2d 1868, 1877 (T.T.A.B. 2011) (objections to musicologist and marketing professional
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`offering expert testimony regarding significance of mark overruled). It is without question that
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`Mr. Fishman has the qualifications of serving as an expert on matters relating to legal marketing,
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`2 Fishman Tr. 17:23-19:15.
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`and that his testimony is relevant under F.R.E. 104, to help the trier of fact understand how a
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`consumer would review the phrase INJURED? REMEMBER THIS NAME 1-800-
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`LUNDYLAW as what would be only seen by a consumer as a common instructional phrase in
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`attorney advertising. His testimony helps the trier of fact to understand how a law firm seeks to
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`encourage clients to retain it, and the different types of advertising that law firms use. Fishman
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`Report at 4-5. Applicant’s own counsel is a member of the same peer review organization as Mr.
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`Fishman. Fishman Tr. 15:21-16:12. Fishman’s expertise emanates from his significant
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`experience in the legal marketing sector and knowledge of brand differentiation, and his
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`experience in creating effective marketing campaigns. Fishman Report at 1-2.
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`For Applicant to argue that Mr. Fishman’s testimony should be stricken because he
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`referred to trademarks without being an “expert in trademarks” is an odd objection, since he has
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`been introduced as a marketing expert. Mr. Fishman’s Amended Expert Report plainly states
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`that “[a]s CEO of Fishman Marketing, Inc., I help law firms develop differentiation strategies
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`and creative marketing campaigns. This includes marketing planning; branding, differentiation
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`and positioning; practice-group marketing; and the development of collateral materials
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`including, e.g. advertising, websites, brochures, etc.” Fishman Report at 1 (bold emphasis
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`added). Therefore, Applicant’s statement that “the Amended Expert Report of Ross Fishman did
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`not contain the basis of his qualifications to make any statement with respect to brands or
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`branding” is unsubstantiated. A trademark lawyer does not create a trademark. Trademark
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`lawyers protect trademarks. This seems to be a misunderstanding of Applicant’s counsel.
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`Applicant argues that Mr. Fishman is not entitled to use the term “trademark” at all, since he is
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`not a trademark attorney. However, he has used the term as a marketing expert, and his ability to
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`use the term “trademark” as a marketing professional is corroborated by Applicant’s own expert
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`witness. Marketing experts use the term “trademark.”
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`Q. So if you’re not a trademark attorney, how would you know what a trademark is?
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`A. I think that common knowledge in the industry and what we do for a living has
`educated us, has educated me.
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`Q. So if you’re in the marketing industry, you would know what a trademark is; is that
`your impression?
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`A. We should know what a trademark is because it is used very commonly.
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`Schillinger Tr. 23:5-12.
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`That a trademark is a “brand” is also a fact corroborated by Applicant’s Director of
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`Marketing and Advertising. Sortman Discovery Tr. 18:8-11 (“So if we have a partnership with a
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`sports team or a location, I oversee how our brand is communicated in those locations through
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`signage.”); 18:17 (“Lundy Law is a brand.”); 20:13-14 (When hired by Lundy Law, Sortman was
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`given the goal of “increas[ing] brand awareness”); and 20: 19-20 (defining “brand awareness” as
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`“That people notice and remember the name.”). A branding expert ordinarily looks at
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`trademarks as part of consulting. Fishman Tr. 48:2-6. Indeed, Applicant’s expert in this case
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`agrees that marketers can surely look at trademarks, and use this term. Schillinger Tr. 23:5-12.
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`Mr. Fishman’s testimony as an expert is relevant. The issue in a failure to function case is
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`“whether the term sought to be registered would be perceived as a mark identifying the source of
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`the goods or merely as an informational phrase.” In re Phoseon Tech. Inc., 103 U.S.P.Q.2d
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`1822, 1828 (T.T.A.B. 2012). The expertise of a branding professional directed to the legal
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`profession is how to make his or her client’s brand stand out so that consumers associate it with a
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`particular company. Fishman Tr. 17:6-20. Key to this analysis is brand recognition “used to
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`create the perception of skill and success” and “which distinguishes [personal injury firms] from
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`all other firms that provide similar services.” Fishman Report at 4-5. And Mr. Fishman clearly
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`states that, “[f]rom the marketing perspective,” REMEMBER THIS NAME is not a phrase
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`that would engender brand recognition in the eyes of consumers. Fishman Report at 5; Fishman
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`Tr. 38:19 – 39:7. The testimony in this case from Applicant’s own marketing witnesses is that a
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`marketing professional would know what is, or is not, a trademark.
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`Ross Fishman, who began his career as a lawyer and is a member of the bar, only serves
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`as a marketing professional highly qualified to be an expert in this proceeding. Applicant has not
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`indicated why a marketing expert such as Ross Fishman lacks the credentials and experience to
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`testify about “legal services.” Mr. Fishman has opined in his Report that in consumer-facing law
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`firms’ marketing strategies, direct statements are important. Fishman Report at 6-7. Therefore,
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`Mr. Fishman’s expert opinion of whether or not INJURED? REMEMBER THIS NAME 1-800-
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`LUNDYLAW functions as a brand is viewed from his professional prospective as one who
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`works with law firms on their marketing. This testimony is clearly relevant to this case. The
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`advertising campaign is a “successful” one, but the phrase REMEMBER THIS NAME is not a
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`trademark. Fishman Tr. 46:2-19; 81:18-82:5. It is as a call to action simply a mere instruction.
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`Fishman Tr. 81:18-82:5. This opinion, as a fact under consideration by the Board, is
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`corroborated by Applicant’s own marketing witness.
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`Mr. Fishman’s report is reliable, based on his experience as a marketing professional, and
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`he reliably applies his opinion to the facts of this case based on his review of the advertising of
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`Lundy Law, and his knowledge of law firm advertising. Applicant seeks to cast aspersions on
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`Mr. Fishman by arguing that he has both said that a “call to action” may not be a trademark and a
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`“call to action” may be a trademark. Applicant’s Brief at 8. That is a misreading, or a
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`misunderstanding, of Mr. Fishman’s testimony. Mr. Fishman, based on his experience as a
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`marketing expert, defines the type of advertising that Lundy Law conducts, which is “call to
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`action” advertising, to provide the trier of fact with the context of the type of advertising at issue.
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`Fishman Report at 7. The fact that this is “call to action” advertising is not disputed. Fishman
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`Rebuttal ¶¶ 4-5. Some “call to action” advertising may rise to the level of a trademark, and some
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`may not. Fishman Tr. 86:14-16. Rhyming “calls to action,” for example, such as “Better Call
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`Saul,” may indeed rise to the level of a brand or source indicator. Fishman Report at 7.
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`However, in the case of Applicant, the phrase REMEMBER THIS NAME is an embedded in a
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`larger phrase is not a trademark.
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`As another attempt to discredit Mr. Fishman, Applicant’s Motion to Strike requested that
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`the Board strike lines from Mr. Fishman’s testimony that list Mr. Fishman’s background
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`qualifications. The qualifications listed have not been disputed. Moreover, because the “Board
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`has broad discretion in determining whether to admit or exclude expert testimony,” Corporacion
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`Habanos, S.A. v. Guantanamera Cigars Co., 102 U.S.P.Q.2d 1085, 1091 (T.T.A.B. 2012), it
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`should look at the weight of the testimony. A motion to strike background materials or seeking
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`to discredit Mr. Fishman on unrelated grounds is improper and prejudicial, and should therefore
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`be disregarded.
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`II.
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`APPLICANT’S OBJECTION TO OPPOSER’S EXHIBIT 3 IS MOOT, SINCE
`OPPOSER ALSO PROVIDED THESE EXHIBITS AS REBUTTAL EVIDENCE
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`The objection to Opposer’s Exhibit 3 was mooted by Mr. Fishman’s Rebuttal Declaration
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`as well as the Rebuttal Notice of Reliance (Dkt. 84). Applicant has not objected to Mr.
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`Fishman’s Rebuttal Declaration. Consequently, there is no pending motion to strike related to
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`this material, and therefore any objection to this material should not be considered. A failure to
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`disclose information in a party’s disclosures is not worthy of striking a witness’ testimony if “the
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`failure was substantially justified or harmless.” Spier Wines (Pty) Ltd., 105 U.S.P.Q.2d 1239,
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`1241 (T.T.A.B. 2012). These exhibits are distinguished from Applicant’s earlier citation to
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`Wonderbread 5 v. Gilles, 115 U.S.P.Q.2d 1296 (T.T.A.B. 2015), which did not deal with an
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`exhibit offered by an expert witness on rebuttal.
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`III. CONCLUSION
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`For the foregoing reasons and Opposer’s earlier response at Dkt. No. 70, Applicant’s
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`Amended Motion to Strike should be denied.
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`Dated: September 29, 2017
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`/s/ Jacqueline M. Lesser
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`Jacqueline M. Lesser, Esq.
`Baker & Hostetler LLP
`Cira Centre, 12th Floor
`2929 Arch Street
`Philadelphia, PA 19104-2891
`Tel: 215-568-3100
`Fax: 215-568-3439
`jlesser@bakerlaw.com
`Attorneys for Opposer, Larry Pitt &
`Associates, P.C.
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`CERTIFICATE OF SERVICE
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`I hereby certify that on this 29th day of September, 2017, I caused a true and correct copy
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`of the foregoing OPPOSER’S SUPPLEMENTAL OPPOSITION TO APPLICANT’S
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`AMENDED MOTION TO STRIKE PORTIONS OF ROSS FISHMAN DEPOSITION to be
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`served by email upon Manny D. Pokotilow, Esq., counsel for Applicant, Lundy Law at
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`mpokotilow@crbcp.com.
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`/s/ Jacqueline M. Lesser
`Jacqueline M. Lesser
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`611376085.1
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