The Trademark Trial and Appeal Board (TTAB) issued a precedential decision on April 10, 2013 in RTX Scientific, Inc. v. Nu-Calgon Wholesaler, Inc. The TTAB granted Nu-Calgon’s motion to compel RTX Scientific to serve an expert written report for its third-party witness, Roger Holder, according to Federal Rule of Civil Procedure (FRCP) 26(a)(2)(B).

RTX Scientific seeks to cancel Nu-Calgon’s registration for cleaning preparation for air conditioning or refrigeration coils because the mark:

On October 26, 2012, RTX Scientific filed an expert disclosure statement with the TTAB identifying Holder as an "unretained" expert. Nu-Calgon filed a motion to exclude Holder’s expert testimony or to compel a written expert report under FRCP 26(a)(2)(B).

The key issue in this decision was how to determine whether a party's witness is "retained or specially employed to provide expert testimony," as such a witness is required to provide a written report under FRCP 26(a)(2)(B). In TTAB inter partes proceedings, the TTAB noted that an expert's participation is based on the party's belief as to whether damages arise from a mark's registration and therefore stems from their experience in a given trade or industry. The TTAB distinguished witnesses whose enlistment as expert instead arises from on-the-scene involvement in any incidents giving rise to the litigation, such as in the case of tort or personal injury cases. In inter partes proceedings, there are usually not specific incidents to which experts have on-the-scene involvement.

The TTAB decided that Holder therefore qualified as a retained witness and that RTX Scientific must provide a written report because Holder:

RTX Scientific admitted Mr. Holder was capable of giving expert testimony, but argued that Holder was not retained because Holder:

The TTAB rejected both of RTX Scientific’s arguments, pointing out that under the relevant rule and case law a party's control over the expert's time or compensating the expert does not determine whether the expert is retained.