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Design Ideas Ltd. v. Meijer, Inc.

United States District Court, C.D. Illinois, Springfield Division

July 23, 2018

DESIGN IDEAS, LTD., Plaintiff,
MEIJER, INC. and WHITMOR, INC., Defendants.



         This cause is before the Court on Defendants' Motion in Limine to Exclude the Testimony of B. Brett Heavner (d/e 162) and Motion in Limine to Exclude the Testimony of Duncan Still (d/e 163). The Court GRANTS IN PART the motion to exclude Heavner's testimony. Heavner may testify regarding the practice and procedure of the United States Patent and Trademark Office (PTO), but his testimony regarding his interpretation of the PTO's handling of Plaintiff's trademark application for the SPARROWCLIPS mark would not be helpful to the trier of fact. The motion to exclude Still's testimony is denied.

         I. BACKGROUND

         Plaintiff Design Ideas, Inc. filed a First Amended Complaint against Defendants Meijer, Inc. and Whitmor, Inc. alleging copyright infringement under the Copyright Act of 1976, 17 U.S.C. § 101, et seq., unfair competition under the U.S. Trademark Act, 15 U.S.C. §§ 1051, et seq., and violations of the Digital Millennium Copyright Act, 17 U.S.C. §§ 1201, et seq. (DMCA). The First Amended Complaint also contains state law claims asserting unfair competition, violations of the Illinois Deceptive Trade Practices Act, 815 ILCS 510/1, the Illinois Consumer Fraud and Deceptive Practices Act, 815 ILCS 505/2, and breach of contract.

         Plaintiff served upon Defendants the expert reports of B. Brett Heavner and Duncan Still. Defendants moved to exclude the testimony of Heavner and Still.


         “The admission of expert testimony is governed by Federal Rule of Evidence 702 and the principles outlined in Daubert [v. Merrell Dow Pharm., Inc., 509 U.S. 579, 589 (1993).]” Bielskis v. Louisville Ladder, Inc., 663 F.3d 887, 893 (7th Cir. 2011). To determine whether to admit expert testimony, this Court must examine whether (1) “the witness is qualified, ” (2) “the expert's methodology is scientifically reliable, ” and (3) “the testimony ‘will assist the trier of fact to understand the evidence or to determine a fact in issue.'” Myers v. Ill. Cent. R.R. Co., 629 F.3d 639, 644 (7th Cir. 2010) (quoting Ervin v. Johnson & Johnson, Inc., 492 F.3d 901, 904 (7th Cir. 2007)). The test is a flexible one. Bielskis, 663 F.3d at 894 (the district court performs a gatekeeping function when determining whether to exclude expert testimony). The party that proffers an expert's testimony must establish the admissibility of the testimony by a preponderance of evidence. Lewis v. CITGO Petroleum Corp., 561 F.3d 698, 705 (7th Cir. 2009).

         To determine whether a witness is qualified as an expert, the court must compare the area in which the witness has “superior knowledge, skill, experience, or education with the subject matter of the witness's testimony.” Carroll v. Otis Elevator Co., 896 F.2d 210, 212 (7th Cir. 1990). “Rule 702 specifically contemplates the admission of testimony by experts whose knowledge is based on experience.” Walker v. Soo Line R.R. Co., 208 F.3d 581, 591 (7th Cir. 2000).

         To aid courts in assessing the reliability of scientific expert testimony, the Supreme Court, in Daubert, set forth a non-exhaustive list of “guideposts” for consideration: (1) whether the scientific theory can be and has been tested; (2) whether the theory has been subjected to peer review and publication; (3) the theory's known or potential rate of error when applied; and (4) whether the theory has been “generally accepted” in the scientific community. Daubert, 509 U.S. at 593-94; see also Chapman v. Maytag Corp., 297 F.3d 682, 687 (7th Cir. 2002). In addition to these factors, the 2000 Advisory Committee's Notes to Federal Rule of Evidence 702 suggest that a court also consider (5) whether “maintenance standards and controls” exist; (6) whether the testimony relates to “matters growing naturally and directly out of research they have conducted independent of the litigation, or whether they have developed their opinions expressly for purposes of testifying”; (7) “[w]hether the expert has unjustifiably extrapolated from an accepted premise to an unfounded conclusion”; (8) “[w]hether the expert has adequately accounted for obvious alternative explanations”; (9) “[w]hether the expert is being as careful as he would be in his regular professional work outside his paid litigation consulting”; and (10) “[w]hether the field of expertise claimed by the expert is known to reach reliable results for the type of opinion the expert would give.” Fed.R.Evid. 702 Advisory Committee's Notes (2000 amends.) (internal quotation marks omitted). Because the Daubert inquiry is a flexible one, an expert's testimony need not satisfy each of the above factors to be admissible. Chapman, 297 F.3d at 687; see also Kumho Tire Co., Ltd. v. Carmichael, 526 U.S. 137, 150 (1999) (“”In other cases, the relevant reliability concerns may focus upon personal knowledge or experience”).

         III. ANALYSIS

         A. The Motion to Exclude the Testimony of B. Brett Heavner is Granted In Part

         On April 3, 2017, Plaintiff served upon Defendants the expert report of B. Brett Heavner, a practicing trademark attorney with the firm of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P. In Heavner's Report, he provides an overview of PTO trademark practices and procedures. Heavner also provides his opinion about the meaning of the PTO examining officer's actions regarding Plaintiff's registration application for the SPARROWCLIPS mark. For example, Heavner states that, because the examining attorney did not refuse registration of SPARROWCLIPS based on lack of distinctiveness, mere descriptiveness, or other grounds, the examining attorney determined that the SPARROWCLIPS mark is either inherently distinctive when viewed as a whole or has acquired distinctiveness. Report ¶ 31. Heavner also states that the examining attorney retained the Section 2(f) claim only as to the term SPARROW in the record, which indicated the Examining Attorney's belief that “this was sufficient to establish acquired distinctiveness in the event that the term SPARROW could somehow be deemed descriptive.” Id. ¶ 37. Heavner states that the Examining Attorney's position is consistent with the law and that the law presumes that Plaintiff's 2(f) claim was sufficient to establish acquired distinctiveness. Id. Heavner states it is his opinion that the SPARROWCLIPS mark is distinctive, either due to status as an inherently distinctive arbitrary mark or due to acquired distinctiveness based on longstanding substantially exclusive use. Id. 41.

         Heavner states that he examined the specimens submitted to the PTO, including the packaging and promotional materials displaying the SPARROWCLIPS mark, and concluded that the “examining attorney was justified in viewing [Plaintiff's] specimens as establishing trademark usage of SPARROWCLIPS. Id. ¶ 38. Heavener concludes that Defendants are using CANARY CLIPS as a trademark within the meaning of the Lanham Act. Id. ¶ 40.

         Heavner also offers the opinion that the PTO regularly treats words trademarks linked to the decorative shape of a product as inherently distinctive by granting registrations, giving as examples GOLDFISH, LUCKY CHARMS, and DIPPIN' DOTS. Id. ¶ 35. Heavner also states his opinion that Defendants' affirmative defenses are meritless. Id. ¶ 41.

         Defendants move to exclude Heavner's testimony. Defendants do not challenge Heavner's qualifications or methodology but only that the testimony contains inadmissible legal conclusions and is not helpful to determining any facts at issue in the case.

         First, Defendants argue that testimony regarding the practices and procedures before the PTO is not helpful to the determination of any facts at issue in this case. Second, Defendants argue that Heavner's opinion whether the SPARROWCLIPS mark is distinctive and qualified for trademark protection is a wholly inadmissible legal conclusion. As examples of Heavner's legal conclusions, Defendants specifically identify the following statements:

• The term SPARROW has no relationship to the product, “clips” and thus should be categorized as an ...

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