This is a trademark infringement dispute between the franchisor, Spice Merchants Entities Corp., owned by Lisa Freeman, and its former franchisee, Pretty Colorado, owned by Corine Winslow. Freeman alleged violations of the “Breckenridge Tea & Spice” mark and claimed that Winslow and Pretty Colorado are using the same trade dress as the Spice franchises.
Plaintiffs filed a motion to exclude the testimony of Defendants’ expert, Steven H. Weigler, Esq. Weigler is an expert in trademark prosecution and law and believes that expert testimony in the area of trademark practice, procedure, custom, usage, and law related to trademark rights and formal disputes can assist “even the most experienced judges” on issues of trademark.
The gist of Plaintiffs’ argument is that Weigler’s testimony will not assist the trier of fact (in this case, the trial judge) because experts are not to state legal conclusions drawn by applying law to the facts.
Trademarks Expert Witness
Steven H. Weigler, Esq. is a trademark and intellectual property attorney who has prosecuted over 1,015 trademarks. He has litigated numerous trademark infringement lawsuits as well as trademark cancelation proceedings at the United States Patent and Trademark Office’s (“USPTO”) Trademark Trial and Appeal Board (“TTAB”). Weigler publishes frequently on the subject of trademarks and trade dress protection.
He is an active member of the International Trademark Association, IR Global (Intellectual Property Section), and the World Trade Center. Weigler collaborates in written and video content with similarly situated trademark professionals and other practitioners. He teaches a course in International Intellectual Property Protection for the World Trade Center in Denver, Colorado.
Discussion by the Court
Plaintiff claimed that by using Breckenridge Tea and Spice to sell tea and spices, Defendants were causing confusion with Plaintiff’s mark. Defendants’ affirmative defenses claimed fraudulent procurement: i.e., the registered mark was fraudulently procured, thus making it unenforceable and/or cancellable.
Defendants, via testimony they hoped to elicit from Weigler, argued that the trademark is in fact invalid as it is procured by fraud, and therefore the franchise documents contained misrepresentations, which presumably made the franchise agreement itself unenforceable.
The Court found no likelihood of confusion with respect to Pretty Colorado and Winslow’s use of the BRECKENRIDGE TEA & SPICE mark or the supposedly proprietary trade dress. Moreover, Weigler’s opinion that Plaintiffs defrauded the trademark examiner usurped the role of the Court. As a result, the Court excluded Weigler’s opinions on those subjects.
However, the Court deemed Weigler’s testimony about the process of trademark prosecution and how an applicant or the applicant’s attorney interacts with the USPTO’s examining attorney to be helpful.
In other words, Weigler was not allowed to testify that he believes this to be an incident of fraud in trademark application process, but he was allowed to explain, as an expert in trademark prosecution, how the SPICE MERCHANTS and SPICE & TEA MERCHANTS marks came to be registered and whether this prosecution is consistent or inconsistent with the norms with which he is familiar as a trademark expert.
Held
The Court granted in part and denied the Plaintiffs’ motion to exclude the testimony of Defendants’ expert Steven H. Weigler, Esq.
Key Takeaway:
The judge, in this case, is not an expert in intellectual property, and it would be helpful to hear how a trademark prosecution occured.
The Court believed that it would be helpful for Weigler to explain a trademark applicant’s obligations of candor to the USPTO, and the significance of the removal of “spices” from the description of the services being provided in connection with the attempted registration.
Case Details:
| Case Caption: | Spice Merchants Entities Corp. Et Al V. Pretty Colorado, LLC Et Al |
| Docket Number: | 1:24cv371 |
| Court Name: | United States District Court, Colorado |
| Order Date: | July 07, 2025 |
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