United States District Court, D. New Jersey
MEMORANDUM AND ORDER
G. SHERIDAN, U.S.D.J.
matter comes before the Court on Plaintiff/Defendant Kars 4
Kids, Inc.'s (hereinafter "Kars 4 Kids") in
limine motion to exclude evidence, testimony, and
references to Plaintiff/Defendant America Can! Cars for
Kids' (hereinafter "America Can!") unpleaded
marks. (ECF No. 195). Specifically, Kars 4 Kids seeks to bar
America Can! from asserting a new claim or theory of
infringement based on the phrase "Write Off the Car, Not
the Kid" ("WOTCNTK"), which it argues has been
presented for the first time by America Can! in its proposed
jury instructions and proposed verdict form. In response,
America Can! argues that WOTCNTK has always been recognized
to be a relevant mark because it relates to the one or more
of the affirmative or defensive issues in this case. For the
reasons set forth herein, Kars 4 Kids' motion is granted,
and America Canl's request to amend the final pretrial
order under Fed.R.Civ.P. 16(e) or 15(a)(2) is denied.
Kids argues that it first learned of America Canl's plan
to assert claims for the WOTCNTK mark in America Canl's
proposed verdict sheet and proposed jury instructions. In
response, America Can! argues Kars 4 Kids has acknowledged
the existence of this mark, and thereby the existence of this
claim, in: (1) its initial complaint, (ECF No. 1, at ¶
22 [14-7770]); (2) its Second Set of Requests for Production
of Documents (Confoy Decl., Exs. 1-2, ECF Nos. 197-2 and
197-2); (3) Deposition notices, (Id. at Ex. 3, ECF
No. 197-4); (4) Questions during depositions, (Id.
at Exs. 4-6, ECF No. 197-5, 197-6, 197-7); and (4) comments
in the summary judgment papers, (ECF No. 116). Even more,
according to America Can!, the WOTCNTK mark is properly
before this Court by way of the Final Pretrial Order.
Rule 16(e), when a final pretrial order is entered, it
"limits the issues for trial and in substance takes the
place of pleadings covered by the pretrial order."
Bornstein v. Cnty. of Monmouth, No. 11-5336, 2015
U.S. Dist. LEXIS 59183, at *26 (D.N.J. May 6, 2015) (quoting
Basista v. Weir, 340 F.2d 74, 85 (3d Cir. 1965)).
"The court may only modify the order issued after a
final pretrial conference only to prevent manifest
injustice." Fed.R.Civ.P. 16(e). "It is well
established that departure from or adherence to the pretrial
order is a matter peculiarly within the discretion of the
trial judge." Beissel v. Pittsburgh & L.E.R.
Co., 801 F.2d 143, 150 (3d Cir. 1986).
'do not normally expect to see claims or defenses not
contained in the pleadings appearing for the first time in
the pretrial order'" because this practice
"deprives one's adversary of fair notice, possibly
discovery, and the opportunity for motion practice, and is
subject to abuse by those who employ a sporting theory of
justice, and the laudable purpose of the Rule is to avoid
surprise, not foment it." Israel v. Smith, No.
13-cv-0097, 2018 U.S. Dist. LEXIS 64042, at *5 (DiN. J.Apr.
16, 2018) (quoting Bornstein, 2015 U.S. Dist. LEXIS
59183, at *27). Moreover,
[i]n the few instances where a party has sought to inject
some new element into the case by way of the final pretrial
order, courts have not blindly or automatically applied the
rule that final pretrial orders supersede the pleadings.
Instead, courts have carefully assessed the prejudice to the
opposing party and, where prejudice exists, the newly
asserted claim or defense has been rejected despite its
inclusion in the final pretrial order.
Id. (quoting Bornstein, 2015 U.S. Dist.
LEXIS 59183, at *29). If a new claim or defense is presented
for the first time in the final pretrial order, opposing
counsel must "meticulously examine the order, taking
exception, if necessary, to the additions, and recording
their objection in the pretrial order."
Bornstein, 2015 U.S. Dist. LEXIS 59183, at *28
(quoting In re AT&T Sec. Litig., Civil Action
No. 00-5364, 2004 U.S. Dist. LEXIS 28452, at *16 (D.N.J. Apr.
6, 2004)). The party that is seeking to add a claim or
defense through the final pretrial order "should do so
with specificity and clarity so as to minimize the ill
effects of that practice. Specificity and clarity provide the
trial court with a fair opportunity to consider whether to
approve or deny what is obviously an attempt to amend the
pleadings at a rather late date." Id. (quoting
In re AT&T Sec. Litig., 2004 U.S. Dist.
LEXIS 28452, at *16).
the Court notes that in its Complaint filed in the Northern
District of Texas, and its counterclaims filed in the
District of New Jersey, America Can! has not asserted the
WOTCNTK mark. In fact, in both its complaint and
counterclaim, America Can! mentions the WOTCNTK mark once,
where it discusses that this "related marketing slogan .
. . [has] received widespread recognition and value in the
United States." (See ECF No. 1, at ¶ 14
[16-4232] and ECF NO. 16, at ¶ 12 [14-7770]). Even more,
the complaint and counterclaim only discuss Kars 4 Kids
alleged infringement of America Can!'s "CARS FOR
KIDS" mark, and not any alleged infringement of the
WOTCNTK mark. (See ECF No. 1, at ¶ 14 [16-4232]
and ECF NO. 16, at ¶ 12 [14-7770]).
Can! points to part five of the Final Pretrial Order which
contains its contested facts. Therein, it alleges that it has
been using the WOTCNTK mark and has gained goodwill through
that mark, that Kars 4 Kids began to use the WOTCNTK mark in
or around 2008, and Kars 4 Kids use of that mark has caused
actual confusion and has lead to Kars 4 Kids obtaining
donations that would have otherwise been provided to America
Can!. (Final Pretrial Order, ECF No. 187, at part 5,
¶¶ 111-119). America Can! argues that these
allegations, in combination with part twelve of the Final
Pretrial Order which outlines America Can!'s legal
issues, makes clear that this mark "and other marks are
encompassed in legal issues to be decided in this action .. .
."(America Can!'s br., ECF No. 197, at 6). However,
these legal issues make no mention of the WOTCNTK mark, and
instead, America Can! argues that paragraph eleven of this
section encompasses that mark, which reads:
[w]hether Kars 4 Kids' conduct willfully, deliberately,
and intentionally caused confusion, mistake, or deception as
to the source or origin of Kars 4 Kids' services such
that consumers may believe that Kars 4 Kids or Kars 4
Kids' services are sponsored by, endorsed by, approved
by, licensed by, authorized by, or affiliated or connected
with Cars for Kids.
(Final Pretrial Order, ECF No. 187, at part 12, ¶l 1).
America Can! argues that it has properly asserted this claim
in the final pretrial order, the Court disagrees. Clearly,
these are new claims that, for the first time, America Can!
is raising through the final pretrial order. However, America
Can's! claim for the WOTCNTK mark has not been made with
any specificity or clarity, as it is not clearly stated in
the final pretrial order's legal issues, and is only
briefly mentioned in America Can's! contested fact
section. America Can! would have the Court piece together
separate sections of the final pretrial order to come up with
its claim for the WOTCNTK mark. The Court declines to do so,
in what is an attempt unfairly create a new claim to be tried
Can! argues that it should be permitted to either amend the
final pretrial order under Rule 16(e) to add such claims, or
allowed to amend under Rule 15(a)(2). Under Rule 16(e), the
court may only modify the order to prevent manifest
injustice. Under Rule 15(a)(2), "a party may amend its
pleading only with the opposing party's written consent
or the court's leave." Fed.R.Civ.P. 15(a)(2). Leave
to amend the pleadings is granted freely "when justice
so requires." Id. Courts may deny leave to
amend where "plaintiffs delay in seeking amendment is
undue, made in bad faith, prejudicial to the opposing party,
or the amendment fails to cure the jurisdictional
defect." Alvin v. Suzuki, 227 F.3d 107, 121 (3d
Cir. 2000). Here, under both 16(e) and 15(a)(2), the Court
considers the prejudice to Kars 4 Kids. Id; see also
Israel, 2018 U.S. Dist. LEXIS 64042, at *5. Clear notice
of this claim to Kars 4 Kids, and to the Court, came only
upon submission of America Cans! proposed jury instructions
and proposed jury verdict. America Can! argues that Kars 4
Kids will not be prejudiced with inclusion of this claim, as
it has previously conducted discovery on that topic and
deposed witnesses regarding the WOTCNTK mark. However, upon
review of those deposition transcripts, it appears to the
Court that Kars 4 Kids deposed witnesses regarding America
Can!'s use of the "TM" symbol with the mark,
and whether that mark was its "primary marketing
message" or if it was the company name. (See,
e.g., Confoy Decl., Ex. 4 Dep. Of Malcolm Wentworth, at
¶ 31:16-32:14, 155:21-25, 162:3-23; Ex. 5. Dep. Of
Richard Marquez, at ¶ 120:19-122:25, 126:5-22; Ex. 6
Dep. Of Cheryl Poldrugach, at ¶ 42:11-43:7). According
to Kars 4 Kids, it would have conducted additional discovery
on this mark, including depositions, and may have conducted a
survey to determine if the mark has attained secondary
meaning or whether there was any likelihood of confusion.
America Can! to proceed with this claim would prejudice Kars
4 Kids, as they have been deprived of fair notice, a chance
to conduct discovery specifically on this issue, and the
opportunity for motion practice specifically related to the
WOTCNTK mark. In re AT&T Sec. Litig., 2004 U.S.
Dist. LEXIS 28452, at *16. For these reasons, Kars 4
Kids' Motion is granted, America Can! may not present any
evidence, testimony, and references to ...