United States District Court, D. Maryland
Xinis United States District Judge.
is a Motion to Exclude the expert report and testimony of
Peter Magalhaes (ECF No. 82) and a Motion for Partial Summary
Judgment (ECF No. 71) filed by Plaintiffs/Counter Defendants
JFJ Toys, Inc. and Fred Ramirez (collectively,
“Plaintiffs”). The issues are fully briefed and
the Court now rules pursuant to Local Rule 105.6 because no
hearing is necessary. For the reasons stated below,
Plaintiffs' Motion to Exclude is granted and
Plaintiffs' Motion for Partial Summary Judgment is
granted in part and denied in part.
JFJ Toys, Inc. d/b/a D&L Company (“JFJ”) is
the manufacturer and distributor of a children's toy
product-an air missile toy known and trademarked as STOMP and
STOMP ROCKET. ECF No. 1 at 1; Declaration of Fred Ramirez,
ECF No. 71-6 at 2. The air missile toy was manufactured and
sold by JFJ until on or about January 1, 2015, when D&L
Company LLC (“D&L”) was formed. ECF No. 71-6
at 2. Plaintiff Fred Ramirez (“Plaintiff
Ramirez”) is the sole owner of D&L. ECF No. 71-6 at
2. D&L is now responsible for the manufacture and sale of
Plaintiffs' STOMP ROCKET brand products under a license
from Plaintiff Ramirez. ECF No. 71-6 at 2.
1992, Plaintiff Ramirez began marketing the “Stomp
Rocket.” ECF No. 71-6 at 1. On February 2, 1999,
“STOMP ROCKET” was registered by Plaintiff
Ramirez with the United States Patent and Trademark Office
(“USPTO”), under U.S. Registration No. 2, 221,
554, for use in connection with “toys, namely, flying
winged tubes and structural parts therefor” (the
“Stomp Rocket Registration”). See ECF
No. 71-11. The Stomp Rocket Registration was renewed on June
26, 2008, and it became incontestable under 15 U.S.C.
§1065 on October 30, 2009. ECF No. 71-15. On April 4,
2000, “STOMP” was registered by Plaintiff Ramirez
with the USPTO, under Registration No. 2, 338, 580, for use
in connection with “toys, namely, flying winged tubes
and structural parts therefor” (the “Stomp
Registration”). ECF No. 71-16. The Stomp Registration
became incontestable under 15 U.S.C. §1065 on June 27,
2006, and was last renewed on August 23, 2010. ECF No. 71-16
1992, JFJ and D&L have produced several versions of the
Stomp Rocket brand air missile toys, including the Stomp
Rocket, Super Stomp Rocket, Junior Stomp Rocket, Ultra Stomp
Rocket, Stomp Rocket Super High Performance, Stomp Rocket
Ultra, Stomp Rocket Ultra LED, Stomp Rocket Jr. Glow, and
Dueling Stomp Rocket. ECF No. 71-6 at 2; ECF No. 71-37. All
versions of the Stomp Rocket brand toy use an air bladder and
flex tubing to launch lightweight, winged missiles into the
air. ECF No. 71-6 at 2. However, Plaintiffs' Stomp Rocket
kits vary in the number of missiles included, the type of
materials used in manufacturing, the projectile flight path
(100'- 400') and the targeted age group (three and up
to eight and up). Id. Since 1992, Stomp Rocket brand
air missile toys have sold more than 5 million units and have
won awards from iParenting Media (Hot Toy and Excellent
Product Awards) and Creative Child Magazine (Top Toy of the
Year, Seal of Excellence and Preferred Choice Awards).
See ECF No. 71-6 at 2; ECF No. 95-1.
Sears Holding Corporation is the holding company of
Defendants Sears and Roebuck, Co. and Kmart Corporation
(collectively, “Sears”), which operate
approximately 1, 700 retail stores in the United States,
selling tens of thousands of products including
children's toys. ECF No. 78-19 at 2 (Sears Holding
Corporation's public business profile). In 2013,
Defendants entered into an agreement with Toy Quest Ltd. (the
“Purchase Order”) to purchase 10, 596 units of a
BANZAI-brand air missile toy called the Stomp Rocket (the
“Banzai Stomp Rocket”). See ECF No.
began selling the Banzai Stomp Rocket on January 14, 2014,
online on Sears.com and Kmart.com and in Kmart retail stores.
See ECF No. 71-38 at 4; ECF No. 71-39; ECF No. 72-19
at 8. When Defendants began selling the Banzai Stomp Rocket,
Defendant Sears was simultaneously selling Plaintiffs'
Stomp Rocket Ultra, Stomp Rocket Junior Glow, Stomp Rocket
High Performance, Dueling Stomp Rocket, and Stomp Rocket
Ultra LED on its website, www.sears.com. ECF Nos. 71-40,
71-41, 71-42, 71-43.The Banzai Stomp Rocket sold by
Defendants uses a mark that includes the words “Stomp
Rocket.” ECF No. 95-7 (see below for photograph of
Defendants' Banzai Stomp Rocket on left and
Plaintiffs' Super Stomp Rocket on right).
April 29, 2014, Seth Ramirez, General Manager of JFJ and
D&L, became aware that Defendant Kmart was selling the
Banzai Stomp Rocket on Defendant's website www.kmart.com.
Declaration of Seth Ramirez, ECF No. 71-8 at 1. Shortly
thereafter, on May 4, 2014, Plaintiffs' counsel sent a
cease and desist letter to Defendants. ECF No. 95-7 at 2.
Plaintiffs sent a second cease and desist letter on May 19,
2014. ECF No. 95-7 at 5. On June 17, 2014 and again on June
26, 2014, Plaintiffs' counsel, Susan Lutzker, purchased
the Banzai Stomp Rocket from www.kmart.com. See ECF
No. 95-7 at 11-15. In each case, the email purchase
confirmation used the mark “Stomp Rocket” to
refer to the item purchased by Ms. Lutzker. Id.
Following receipt of the cease and desist letter, Kmart
purchased air missile toys for the following season from Toy
Quest which had been repackaged as the BANZAI Power Launcher
Rocket. Declaration of Keith Hobson, ECF No. 78-1 at 3; No.
filed the present action on November 11, 2014, and amended
their Complaint on February 2, 2015, bringing claims of
trademark counterfeiting under Section 32 of the Lanham Act,
15 U.S.C. § 1114(1) (Count I), trademark infringement
under Section 32 of the Lanham Act, 15 U.S.C. § 1114(1)
(Count II), false designation of origin under Section 43(a)
of the Lanham Act, 15 U.S.C. § 1125(a)(1) (Count III),
trademark infringement under the Maryland common law (Count
IV), unfair trade practices under the Maryland Consumer
Protection Act, Md. Code Ann., Comm. Law § 13-101 et
seq. (Count V), and unfair competition under Maryland
common law (Count VI). See ECF No. 34.
February 20, 2015, Defendants filed their Answer to the
Amended Complaint and a Counterclaim for cancellation of the
“Stomp” and “Stomp Rocket” trademark
registrations on the grounds that the marks are generic. ECF
No. 41. On June 10, 2016, Plaintiffs moved for summary
judgment on Defendants' liability as to all claims. ECF
No. 71. And on August 11, 2016, Plaintiffs moved to exclude
the expert report and testimony of Peter Magalhaes. ECF No.
Plaintiffs' Motion to Exclude the Expert Report and
Testimony of Peter Magalhaes
named a “toy marketing expert, ” Peter Magalhaes,
who intends to testify as to (1) whether the term
“Stomp” or “Stomp Rocket” has
acquired secondary meaning as a registered trademark in the
toy industry; (2) whether the term “Stomp” or
“Stomp Rocket” is a generic term; and (3) whether
there is confusion between the Plaintiffs' Stomp Rocket
and the Banzai Stomp Rocket. Expert Report of Peter
Magalhaes, ECF No. 82-3 at 2.
urge the Court to exclude this expert opinion pursuant to
Rule 702 of the Federal Rules of Evidence for its lack of
reliability and relevance. Plaintiffs so urge because Mr.
Magalhaes possesses little to no relevant training, education
and experience to render an opinion in this area. ECF No.
82-1 at 2. Plaintiffs further question the reliability of Mr.
Magalhaes' opinion on two grounds: insufficient
methodology and Mr. Magalhaes' role as an interested
party in the litigation. ECF No. 82-1 at 2, 3. Finally and in
the alternative, Plaintiffs argue that Mr. Magalhaes'
testimony is not helpful to the trier of fact because it is
phrased in conclusory terms and merely opines on the ultimate
legal issue, thereby usurping the fact-finding mission of the
jury. ECF No. 82-1 at 5.
702 contemplates that the court will evaluate whether the
testimony is reliable and will aid the ultimate trier of
fact. Westberry v. Gislaved Gummi AB, 178 F.3d 257,
260 (4th Cir. 1999). The proponent of the expert testimony
bears the burden of establishing its admissibility by a
preponderance of evidence. Cooper v. Smith & Nephew,
Inc., 259 F.3d 194, 199 (4th Cir. 2001). Rule 702
witness who is qualified as an expert by knowledge, skill,
experience, training, or education may testify in the form of
an opinion or otherwise if:
(a) the expert's scientific, technical, or other
specialized knowledge will help the trier of fact to
understand the evidence or to determine a fact in issue;
(b) the testimony is based on sufficient facts or data;
(c) the testimony is the product of reliable principles and
(d) the expert has reliably applied the principles and
methods to the facts of the case.
Evid. 702. Courts have distilled Rule 702's requirements
into two crucial inquiries: whether the proposed expert's
testimony is relevant and reliable. Kumho Tire Co. v.
Carmichael, 526 U.S. 137, 141 (1999); United States
v. Forrest, 429 F.3d 73, 80 (4th Cir. 2005). The trial
court must carry out the special gatekeeping obligation of
ensuring that expert testimony meets both requirements.
Kumho Tire, 526 U.S. at 147.
The Reliability of Mr. Magalhaes' Opinions
urge the Court to apply strictly the factors articulated in
Daubert v. Merrell Dow Pharm., Inc., 509 U.S. 579,
589 (1993) in reviewing Mr. Magalhaes' opinions. It bears
noting, however that Rule 702 does not “create a
schematism that segregates expertise by type while mapping
certain kinds of questions to certain kinds of experts. . . .
[But rather] the trial judge must have considerable leeway in
deciding in a particular case how to go about determining
whether particular expert testimony is reliable.”
Kumho Tire Co. v. Carmichael, 526 U.S. 137, 151-52
(1999). Here, Mr. Magalhaes' opinion relies solely on his
toy marketing experience generally, “requir[ing]
slightly different considerations than other expert
witnesses.” First Data Merch. Servs. Corp. v.
SecurityMetrics, Inc., No. RDB-12-2568, 2014 WL 6871581,
at *5 (D. Md. Dec. 3, 2014).
Advisory Committee Notes to Rule 702 confirm that formal
scientific or academic training and methodology is not a
necessary predicate to testimony as an expert. Rather,
experience alone, or in conjunction with “other
knowledge, skill, training or education, ” can provide
a sufficient foundation for expert testimony. See also
Kumho Tire, 526 U.S. at 156 (“[N]o one denies that
an expert might draw a conclusion from a set of observations
based on extensive and specialized experience.”).
“Experiential testimony need not ‘rely on
anything like the scientific method.'” Casey v.
Geek Squad Subsidiary Best Buy Stores, L.P., 823
F.Supp.2d 334, 345 n.9 (D. Md. 2011) (quoting United
States v. Wilson, 484 F.3d 267, 274 (4th Cir. 2007)).
“[i]f the witness is relying solely or primarily on
experience, then the witness must explain how that experience
leads to the conclusion reached, why that experience is a
sufficient basis for the opinion, and how that experience is
reliably applied to the facts.” Fed.R.Evid. 702,
Advisory Comm. Notes; see also Casey, 823 F.Supp.2d
at 345 n.9 (quoting Wilson, 484 F.3d at 274). The
gatekeeping role of the Court ensures “that an expert,
whether basing testimony upon professional studies or
personal experience, employs in the courtroom the same level
of intellectual rigor that characterizes the practice of an
expert in the relevant field.” Kumho Tire, 526
U.S. at 152.
need not “admit opinion evidence that is connected to
existing data only by the ipse dixit of the expert
[where there is] simply too great an analytical gap between
the data and the opinion proffered.” Pugh v.
Louisville Ladder, Inc., 361 F. App'x 448, 454 n.4
(4th Cir. 2010); accord Alevromagiros v. Hechinger
Co., 993 F.2d 417, 421 (4th Cir. 1993) (“[W]e are
unprepared to agree that ‘it is so if an expert says it
is so.'”) (citation omitted). “Expert
testimony rooted in subjective belief or unsupported
speculation does not suffice.” Zuckerman v.
Wal-Mart Stores E., L.P., 611 F. App'x 138, 138 (4th
Cir. 2015) (quoting Daubert, 509 U.S. at 590)
(internal quotation marks omitted).
party challenges an expert's qualifications, “the
test for exclusion is a strict one, and the purported expert
must have either satisfactory knowledge, skill, experience,
training nor education on the issue for which the opinion is
proffered.” Kopf v. Skyrm, 993 F.2d 374, 377
(4th Cir. 1993) (quoting Thomas J. Kline, Inc. v.
Lorillard, Inc., 878 F.2d 791, 799 (4th Cir. 1989)). But
expertise in one field does not qualify a witness as an
expert in other fields. See Shreve v. Sears, Roebuck
& Co., 166 F.Supp.2d 378, 392 (D. Md. 2001).
Magalhaes intends to opine that the (1) “[t]here is no
secondary meaning ascribed to the term stomp rocket;”
(2) “there is no likelihood of confusion or likelihood
of mistake as to the source of the air missile toy at issue
in this case;” and (3) “the term [sic]
‘stomp rocket' and ‘stomp' are generic
terms and not associated with any single particular
brand.” ECF No. 82-3 at 5. To reach his conclusions,
Mr. Magalhaes relies predominantly on the results of
undefined internet searches, a photograph of “a large
display of Banzai products in a Sears store, ” and a
single public statement of Plaintiff Ramirez. ECF No. 82-3 at
with regard to Mr. Magalhaes' training and
qualifications, they are wholly inadequate for those areas of
offered expertise in marketing and sales for the air
launcher/rocket toy market. Mr. Magalhaes has been
“involved in the marketing of toys” generally
“for approximately seven years, ” and thus has
“interact[ed] with hundreds of persons responsible for
purchasing toys ranging from the largest retailers to mom and
pop toy stores.” ECF No. 82-3 at 3. But even accepting
as true this self-admitted expertise, it is overbroad and
devoid of specifics pertinent to the relevant market of
air-powered launchers or the use of the marks STOMP or STOMP
ROCKET in that same market.
the only toy experience Mr. Maghalaes has enjoyed is as
General Manager of Acquawood-the very corporation who denied
involvement in the “sales” of the rocket toy in
question. ECF No. 99-1 at 13-14. Accordingly, no evidence
demonstrates that Magalhaes has any experience in the
relevant market. Nor has Mr. Magalhaes published any articles
nor previously acted as an expert witness in any matters at
all, and so cannot point to any experience, training or
education in the relevant field. ECF No. 82-3 at 2. Without
more, Mr. Magalhaes has failed to establish his bona fides as
a marketing and sales expert in this particular toy market.
regard, Defendants' reliance on widely varying precedent
highlights Mr. Magalhaes' insufficient qualifications.
Defendants' Response in Opposition, ECF No. 86 at 7
(citing Tassin v. Sears, Roebuck & Co., 946
F.Supp. 1241 (M.D. La. 1996) (expert qualified as a design
engineer where he held an undergraduate and masters in
mechanical engineering, worked in the field for over twenty
years, including extensive work on product design, and had
evaluated the designs of numerous products in
litigation-oriented consulting work); First Tennessee
Bank Nat. Ass'n v. Barreto, 268 F.3d 319, 335 (6th
Cir. 2001) (qualified expert had forty years of experience in
the banking industry); U.S. Diamond & Gold v. Julius
Klein Diamonds LLC, 2008 WL 4116090 (S.D. Ohio 2008)
(allowing an expert to testify based on his 20 years of
experience, published material, and had been retained in over
a dozen civil and criminal cases)). See also ECF No.
86 at 11 (citing Sam's Wines & Liquors, Inc. v.
Wal-Mart Stores, Inc., No. 92 C 5170, 1994 WL 529331, at
*11-12 (N.D. Ill. Sept. 27, 1994) (expert qualified to
testify about an alcohol brand's secondary meaning based
on forty-five years of experience in the liquor industry,
chaired two statewide liquor store associations, chaired a
corporation that owned multiple liquor stores, and owned a
company that franchised liquor stores); Betterbox
Communications Ltd. v. BB Technologies, Inc., 300 F.3d.
325 (3d Cir. 2002) (expert with 20 years in the field of
direct marketing, mail-order catalogs and the use of logos
and how they are used in the marketplace was permitted to
with respect to Mr. Magalhaes' ultimate opinions, Mr.
Magalhaes' report does not explain how he arrived at his
conclusions (his methodology) or how he “reliably
applied” his experience to the facts of this case.
Wilson, 484 F.3d at 274; ECF No. 82-3 at 5.
Similarly, Mr. Magalhaes' brief description of a
hypothetical toy store falls short of reliably applying any
alleged expertise in toy marketing in reaching his conclusion
about the trademarks. His report, devoid of the hallmarks of
admissible expert opinion, lacks “the same level of
intellectual rigor that characterizes the practice of an
expert in the relevant field.” Kumho Tire Co., Ltd.
v. Carmichael, 526 U.S. 137, 152 (1999); accord
United States v. Raynor, No. CRIM. 3:13MJ215, 2013 WL
5770529, at *9 (E.D. Va. Oct. 24, 2013) (quoting Zenith
Elec. Corp. v. WH-TV Broadcasting Corp., 395 F.3d 416,
419 (7th Cir. 2005)) (“An expert must offer good reason
to think that his approach produces an accurate estimate
using professional methods.”); Oglesby v. Gen.
Motors Corp., 190 F.3d 244, 250 (4th Cir. 1999)
(“A reliable expert opinion must be based on
scientific, technical, or other specialized knowledge and not
on belief or speculation, and inferences must be derived
using . . . valid methods.”); Silicon Knights, Inc.
v. Epic Games, Inc., No. 5:07-CV-275-D, 2011 WL 6748518,
at *7 (E.D. N.C. Dec. 22, 2011) (citing Fed.R.Evid. 702;
Wilson, 484 F.3d at 276; Cooper, 259 F.3d
at 200) (“In addition to requiring that an expert's
methodology be generally reliable, Rule 702 requires an
expert to reliably apply his methodology to the
facts.”). Mr. Magalhaes, therefore, will not be
permitted to offer his unfounded opinions in this
The Relevance of Mr. Magalhaes' testimony
relevant, the proposed expert testimony must be helpful to
the trier of fact. Westberry v. Gislaved Gummi AB,
178 F.3d 257, 260 (4th Cir. 1999). “[Q]uestions of fact
that are committed to the jury are the proper subject of
opinion testimony.” United States v. McIver,
470 F.3d 550, 561 (4th Cir. 2006) (citing Fed.R.Evid.
704(a)); see generally Anheuser- Busch, Inc. v.
L. & L. Wings, Inc., 962 F.2d 316, 318 (4th Cir.
1992) (likelihood of confusion is an “inherently
factual” determination which is “particularly
amenable to resolution by a jury.”). By contrast,
expert opinions that merely recite “a legal standard
and draw a legal conclusion by applying law to the facts is
generally inadmissible.” McIver, 470 F.3d at
561-62 (citing United States v. Barile, 286
F.3d 749, 760 (4th Cir. 2002)). An expert's testimony is
deemed a legal conclusion where “the terms used by the
witness have a separate, distinct and specialized meaning in
the law different from that in the vernacular.”
Id. at 562.The district court's task “is
to distinguish [helpful] opinion testimony that embraces an
ultimate issue of fact from [unhelpful] opinion testimony
that states a legal conclusion.” Barile, 286
F.3d at 760.
Magalhaes' opinions almost exclusively opine on the
ultimate legal conclusion. “It is my opinion, ”
he announces, “that stomp rocket is a generic term that
refers to a category of air missile toys” and
“not associated with any product or
manufacturer.” Further, he opines that “there is
no secondary meaning ascribed to the term stomp rocket”
and “there is no confusion between the source of the
particular air missile toy in this case” ECF No. 82-3
are precisely the legal conclusions reserved for the
fact-finder. See U.S. v. Melvin, 508 F. App'x
209 (4th Cir. 2013). Defendants reliance on Solid 21,
Inc. v. Hublot of America, 109 F.Supp.3d 1313, 1318-19
(C.D. Cal. 2015), further undermines the admissibility of
Magalhaes' opinions in this regard. In Solid 21,
the three expert opinions regarding genericness were free of
legal conclusions and buttressed by voluminous exhibits, a
database developed at the behest of the USPTO, and “an
extensive overview of the basis for her opinion . . . with
examples of the use of the term in the industry, ”
respectively. Solid 21, Inc. v. Hublot of Am., 109
F.Supp.3d 1313, 1318 (C.D. Cal. 2015). Mr. Magalhaes has
provided no similar analysis or factual support for his final
opinions on legal conclusions which invade fact finder's
Magalhaes' opinion on likelihood of confusion,
Defendants' attempt to clarify that Magalhaes “will
testify on the name recognition of the BANZAI house
mark” and “purchasing conditions of consumers,
including use of house brands for identical products and the
existence of numerous manufacturers of air missile
toys.” ECF No. 86 at 11. But Mr. Magalhaes' report
provides no basis for even this proffered testimony. As
formulated, Mr. Magalhaes' likelihood of confusion
opinion amounts to little more than a legal conclusion.
See Eghnayem v. Boston Sci. Corp., 57 F.Supp.3d 658,
699 (S.D. W.Va. 2014) (quoting In re Fosamax Prods. Liab.
Litig., 645 F.Supp.2d 164, 192 (S.D.N.Y. 2009))
(excluding expert opinion where the report is a narrative
review of documents and rife with legal conclusions because
“[a]n expert cannot be presented to the jury solely for
the purpose of constructing a factual narrative based on the
record of evidence.”). And devoid of methodology, the
Court cannot even allow Mr. Magalhaes to “offer a more
general expert opinion, using terms that do not have a
separate, distinct, and specialized meaning in the
law.” In re C.R. Bard, Inc., 948 F.Supp.2d
589, 629 (S.D. W.Va. 2013), on reconsideration in
part (June 14, 2013). Thus, Mr. Magalhaes' expert
opinions must be excluded.
Defendants' Request to Supplement Mr. Magalhaes'
their Opposition, Defendants claim that they intend to
supplement Mr. Magalhaes' expert report by submitting new
evidence through Mr. Magalhaes. ECF No. 86 at 7 (“Sears
intends to submit, through Magalhaes, additional evidence of
genericness”). They also suggest that Mr. Magalhaes
will bolster his report with “specific books, websites,
and advertisements.” ECF No. 86 at 9.
Rule of Civil Procedure 26(a)(2)(B) requires that an expert
report contain “a complete statement of all opinions
the witness will express, ” “the facts or data
considered by the witness in forming them, ” and
“any exhibits that will be used to summarize or support
them.” Fed.R.Civ.P. 26(a)(2)(B)(i)-(iii). Failure to
comply with Rule 26 regarding expert disclosure precludes the
moving party from seeking to admit the same evidence at
trial. Fed.R.Civ.P. 37(c)(1); Wilkins v. Montgomery,
751 F.3d 214, 222 (4th Cir. 2014).
37(c)(1), however, provides two narrow exceptions to the
general rule of exclusion: “(1) when the failure to
disclose is substantially justified, and (2) when the
nondisclosure is ‘harmless.'”
Wilkins, 751 F.3d at 222 (internal citations and
quotation marks omitted). To determine whether these
exceptions apply, courts may consider the following factors:
(1) the surprise to the party against whom the evidence would
be offered; (2) the ability of that party to cure the
surprise; (3) the extent to which allowing the evidence would
disrupt the trial; (4) the importance of the evidence; and
(5) the non-disclosing ...