Intellectual Property Experts May Opine on USPTO Practices, But Not Explain Trademark Law

ByZach Barreto


Updated on February 6, 2020

Intellectual Property Experts May Opine on USPTO Practices, But Not Explain Trademark Law

Court: United States District Court for the District of DelawareJurisdiction: FederalCase Name: Am. Cruise Lines, Inc. v. HMS Am. Queen Steamboat Co. LLCCitation: 2017 U.S. Dist. LEXIS 130430

The court found that an intellectual property expert’s testimony was admissible to the extent it was focused on policies and practices of USPTO and excluded to the extent it explained substantive trademark law.


The parties to this suit were two competing cruise firms that made trademark infringement claims against one another. The plaintiff proffered an intellectual property law expert to explain the procedures and policies of the United States Patent and Trademark Office and the nuances of trademark law. The defendant challenged the testimony of the expert on the basis of Daubert.

The Intellectual Property Expert

The plaintiff’s intellectual property expert witness was a partner at an intellectual property law firm. The expert was a specialist in multiple aspects of trademark counseling, prosecution, Appeal Board and Trademark Trial, as well as federal court litigation. He formerly served as an administrative trademark judge on the Trademark Trial and Appeal Board. The intellectual property expert witness authored a treatise on intellectual property law published by Thomson/West. He formerly served as a Chairperson of the USPTO Trademark Public Advisory Committee and co-chair of the DC Bar Intellectual Property Law Section Steering Committee. The intellectual property expert also had experience as an adjunct professor at a law school located in Washington D.C.

The expert was licensed to practice in the district and federal courts of Columbia and the Supreme Court of the United States. He had given numerous lectures on different intellectual property law issues over the course of his career. The expert had also served as an intellectual property expert in litigation in federal courts and was a member of several intellectual property associations.


The defendant moved to exclude the intellectual property expert’s testimony claiming it would have usurped the role of jury instruction, which lies with the court. The plaintiff countered by responding that intellectual property lawyers were frequently allowed by courts to testify regarding the practices and policies of the USPTO. The court found both arguments were correct.

The court noted that the testimony of the intellectual property expert was of the kind that was generally admitted in trademark cases and courts generally allowed experts to testify about the regulations and practices associated with registering federal trademarks. On the other hand, however, the court was of the opinion that the intellectual property expert’s testimony pertaining to substantive trademark law infringed upon the court’s role of instructing the jury on the law, noting that “courts have rejected expert testimony by a lawyer when the testimony is only intended to instruct as to the applicable trademark law,” citing Sam’s Wines & Liquors, Inc. v. Wal-Mart Stores, Inc.


The intellectual property expert witness’s testimony was held to be admissible to the extent it was relevant and focused on the practices and policies of the USPTO. The testimony was excluded to the extent it explained the law.

About the author

Zach Barreto

Zach Barreto

Zach Barreto is a distinguished professional in the legal industry, currently serving as the Senior Vice President of Research at the Expert Institute. With a deep understanding of a broad range of legal practice areas, Zach's expertise encompasses personal injury, medical malpractice, mass torts, defective products, and many other sectors. His skills are particularly evident in handling complex litigation matters, including high-profile cases like the Opioids litigation, NFL Concussion Litigation, California Wildfires, 3M earplugs, Elmiron, Transvaginal Mesh, NFL Concussion Litigation, Roundup, Camp Lejeune, Hernia Mesh, IVC filters, Paraquat, Paragard, Talcum Powder, Zantac, and many others.

Under his leadership, the Expert Institute’s research team has expanded impressively from a single member to a robust team of 100 professionals over the last decade. This growth reflects his ability to navigate the intricate and demanding landscape of legal research and expert recruitment effectively. Zach has been instrumental in working on nationally significant litigation matters, including cases involving pharmaceuticals, medical devices, toxic chemical exposure, and wrongful death, among others.

At the Expert Institute, Zach is responsible for managing all aspects of the research department and developing strategic institutional relationships. He plays a key role in equipping attorneys for success through expert consulting, case management, strategic research, and expert due diligence provided by the Institute’s cloud-based legal services platform, Expert iQ.

Educationally, Zach holds a Bachelor's degree in Political Science and European History from Vanderbilt University.

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