Daniel Defense, Inc. v. Remington Outdoor Company, Inc. et al
Filing
107
ORDER denying in part 62 Motion to Compel without prejudice to the right to renew motion following the District Court's ruling on Summary Judgment; denying 65 Motion for Leave of Absence; granting 92 Motion to Seal Document ; granting 97 Motion to Seal Document. Signed by Magistrate Judge G. R. Smith on 10/19/2015. (loh)
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF GEORGIA
SAVANNAH DIVISION
DANIEL DEFENSE, INC.,
Plaintiff,
V.
Case No. CV414-131
REMINGTON ARMS COMPANY,
LLC,
Defendants.
ORDER
"Consumers who purchase a particular product expect to receive the
same special characteristics every time. The Lanham Act protects these
expectations by excluding others from using a particular mark and
making consumers confident that they can purchase brands without being
confused or misled."
Davidoff& CIE, S.A. v. PLD Intern. Corp., 263 F.3d
1297, 1301 (11th Cir. 2001) (citation omitted). The Act likewise
"protects trademark owners. . . . [It] prevents another vendor from
acquiring a product that has a different set of characteristics and passing
it off as the trademark owner's product."
Id. (cites omitted). It also
drives the core of this trademark infringement action, brought by one
gun-maker against another, and generating a passel of pretrial motions.'
I. BACKGROUND
Plaintiff Daniel Defense, Inc. ("DD") sued Remington Outdoor
Company, Inc. and Remington Arms, Company, LLC ("Remington").
Doe. 1, as amended, doe. 14.2 Remington Outdoor has since been
dropped, doe. 89 at 2, so only Remington. DD "is a manufacturer,
distributor and seller of firearms and firearms accessories in the United
States with product distribution throughout the world." Doe. 46 at 3. It
accuses Remington, a competitor, of copying and misusing its "LIGHTER,
STRONGER, BETTER... ®" and ">> ®" registered trademarks, thus
violating 15 U.S.C. § 1114(1) (the Lanham Act) and state law, O.C.G.A. §
10-1-370 et seq. Doe. 14 at 4; id. at 15 ¶ 30; id. at 16 ¶ 34•3 DD also raises
1
Pending on the docket are motions to compel discovery, doe. 62, to strike a jury
demand, doe. 63, for a leave of absence, doe. 65, for declaratory judgment, doe. 66, to
strike two defense experts' reports as well as their testimony, does. 68 & 70, to seal
documents, does. 92 & 97, for summary judgment, doe. 74, and to strike evidence on
which plaintiff relies in opposing summary judgment. Doe. 98. The motions to
compel and seal will be reached here; the rest remain before the district judge.
2 For purposes of this Order only, the Court is accepting as true the factual
representations noted in the parties' Joint Status Report (doe. 46) and other filings.
"Remington Arms is a manufacturer and distributor of firearms and firearms
accessories." Doe. 46 at 5. It "contends it has not used these phrases in the manner
of trademarks. The phrases are used merely descriptively, and are therefore
protected by the fair use doctrine and cannot be the basis of a trademark infringement
suit." Id. "Remington [also] contends that it has not used [DD's double bracket
design Motif] in the manner of a trademark, and it therefore cannot be the basis of a
2
an unfair competition claim.
Id. at 16-17. It seeks damages.' Despite a
claimed discovery snag (hence, Remington's motion to compel, doc. 62),
Remington has filed a summary judgement motion (doc. 74), which, if
granted, would be case-dispositive of all DD claims. That motion is
pending before the district judge.'
trademark infringement suit." Id. "In the alternative, Remington contends that
even if the phrases and design were used in the manner of a trademark, . . . such uses
create no likelihood of consumer confusion." Id.
"In counterclaims, Remington seeks declaratory judgment that it has not infringed
DD's trademark based on: "a) the fact it has not used the allegedly infringing material
in the manner of a trademark, b) the invalidity of Daniel Defense's alleged
trademarks, and/or c) the absence of a likelihood of confusion. Remington is also
seeking cancellation of Daniel Defense's two trademark registrations based on the
descriptive nature of Daniel Defense's word mark and the functional and/or
ornamental nature of [its] design mark." Doc. 46 at 5-6. "Remington [thus] seeks a
declaratory judgment that it can describe its products as 'lighter' and 'stronger' and
use the common double chevron graphic in its advertisements." Doc. 74 at 4.
' It also sought injunctive relief, id. at 17-18, but Remington has "subsequently
ceased using those marks in [its] promotional materials and [DD] has informed the
Court that the issue is currently moot." Doc. 89.
Meanwhile, says DD, "Remington's misappropriation of [DD's] trademarks and
advertising has forced [DD] to file a further trademark infringement lawsuit that is
presently pending before the Court (Civil Action No. 4:15-cv-00135-JRH-GRS). Th[at]
lawsuit involves Remington's misappropriation of [DD's] "V3" trademark, pending to
register before the USPTO. It is believed that this evidence is yet further reflective of
Remington's 'intent' (because it involves serial and repeated misconduct)." Doc. 91 at
28 (footnote omitted).
3
I. ANALYSIS
A. Governing Standards
Motions to compel are governed by the rules of discovery, which
"require the disclosure of all relevant information so that ultimate
resolution of disputed issues in any civil action may be based on a
full and accurate understanding of the true facts. . . ." Gonzalez v.
ETourandTravel, Inc., 2014 WL 1250034 at * 2 (M.D. Fla. Mar. 26,
2014) (quotes and cite omitted). Hence, "[t]he scope of discovery
under [Fed. R. Civ. P. 26(b)(1)] is broad and includes 'discovery
regarding any matter, not privileged, which is relevant to the claims
or defense of any party involved in the pending action.' Hickman v.
Taylor, 329 U.S. 495, 507-08, 67 S.Ct. 385 2 91 L.Ed. 451 (1947)." Id.
Those resisting discovery must "show specifically how the
objected-to request is unreasonable or otherwise unduly
burdensome." Id.
Claims and defenses determine discovery's scope. Chudasama v.
Mazda Motor Corp., 123 F.3d 1353, 1368 (11th Cir. 1997).
"Evidence is relevant if it has any tendency to make the existence of
any fact or consequence more or less probable than it would be
without the evidence.' United States v. Capers, 708 F.3d 1286, 1308
(11th Cir. 2013)." Gonzalez, 2014 WL 1250034 at * 2.
Brannies v. Internet ROI, Inc., 67 F. Supp. 3d 1360, 1362 (S.D. Ga. 2014)
(emphasis added). "Rule 26 . . . sets forth a very low threshold for
relevancy, and thus, the court is inclined to err in favor of discovery rather
than against it."
McCleod v. Nat'l R.R. Passenger Corp., 2014 WL
1616414 at * 3 (S.D. Ga. Apr. 22, 2014) (quotes and citation omitted).
4
B. Trademark Standards
Remington's Motion to Compel turns on claims and defenses that
principally revolve around the Lanham Act's protection of trademarks
(a/k/a "marks"). The parties' chief factual dispute is over the
"similarity of marks, similarity of goods, similarity of channels of
commerce, similarity of care of consumers, similarity of associated goods
and trademark priority." Doe. 46 at 6. Their chief legal dispute is
"about the validity and infringement of the [DD] marks."
Id. It is thus
worth reviewing the Lanham Act principles that inform their arguments.
Under it:
a defendant is liable for infringement if, without consent, he uses "in
commerce any reproduction, counterfeit, copy or colorable imitation
of a registered mark" which is "likely to cause confusion, or to cause
mistake, or to deceive." 15 U.S.C. § 1114(1)(a). To prevail on a
federal trademark infringement claim, a plaintiff must demonstrate
(1) that its mark has priority, and (2) that the defendant's mark is
likely to cause consumer confusion. Frehling Enters., Inc. v. Int'l
Select Grp., Inc., 192 F.3d 1330, 1335 (11th Cir. 1999).
Fla. Int'l Univ. Bd. of Trustees v. Fla. Nat'l Univ., Inc.,
F. Supp. 3d
-' 2015 WL 1208047 at *3 (S.D. Fla. Mar. 4, 2015) (emphasis added). 6
6
See also Dunkin' Donuts Franchised Rests. LLC v. Cardillo Capital, Inc., 551 F.
Supp. 2d 1333, 1338 (M.D. Fla. 2008) (franchisee's use of "Dunkin Donuts" marks
following termination of franchise agreement with franchisor was likely to have
caused confusion among consumers, who wrongfully believed franchisee to be
operating a franchised shop, as required to establish trademark infringement and
5
The confusion factor figures into plenty of discovery disputes, including a
big bone of contention here:
Courts in the Eleventh Circuit consider seven factors when
determining whether or not a likelihood of consumer confusion
exists: (1) type of mark; (2) similarity of mark; (3) similarity of the
products the marks represent; (4) similarity of the parties' trade
channels and customers; (5) similarity of advertising media; (6) the
defendant's intent; and (7) actual confusion. Frehling, 192 F.3d at
1335. Of these factors, the type of mark and evidence of actual
confusion are considered the most important. Id. (citing Dieter v. B
& HIndus. of Sw. Fla., Inc., 880 F. 2d 322, 326 (11th Cir.1989)).
Florida International, 2015 WL 1208047 at * 3 (emphasis added); see
also Sovereign Military Hospitaller (Etc.) v. The Florida Priory of the
Knights Hospitallers (Etc.), - F.3d -, 2015 WL 6000633 at * 7-16
(11th Cir. Oct. 15, 2015) (comprehensive exploration of these factors);
TracFone Wireless, Inc. v. Clear Choice Connections, Inc., 2015 WL
1954075 at * 4 (S.D. Fla. Apr. 27, 2015). Discovery quests and,
ultimately, the evidence presentation a plaintiff must make,
necessarily delve into considerable nuances because courts not only
balance those seven factors, but do "not have to consider all of [them]
in every case and in some cases, new factors may merit consideration."
unfair competition claims under Lanham Act); Smith v. Wal-Mart Stores, Inc., 537 F.
Supp. 2d 1302, 1316 (N.D. Ga. 2008) (retailer's trademarks "WALMART," "WALMART," and WAL*MART and its word mark "ALWAYS LOW PRICES. ALWAYS"
likely would not be confused with "WALOCAUST," "WAL—QAEDA," "FREEDOM
HATER MART," or BENTON*VILLEBULLIES ALWAYS" concepts).
Sovereign Military Hospitaller, 2015 WL 6000633 at * 8 (quotes and
cite omitted). Too,
the likelihood of confusion should not be determined "by
merely analyzing whether a majority of the subsidiary factors
indicates that such a likelihood exists ... Mather, a court must
evaluate the weight to be accorded the individual factors and
then make its ultimate decision." Suntree Tech., Inc. v.
Ecosense Int'l, Inc., 693 F.3d 1338, 1346 (11th Cir. 2012)
(quoting AmBrit, Inc. v. Kraft, Inc., 812 F.2d 1531 (11th Cir.
1986), cert. denied, 481 U.S. 1041, 107 S.Ct. 1983, 95 L.Ed.2d
822 (1987)); see also Custom Mfg. & Eng'g, Inc. v. Midway
Servs., Inc., 508 F.3d 641, 649 (11th Cir. 2007) ("Because the
bottom line is the likelihood of confusion, application of the
Frehling factors entails more than the mechanistic summation
of the number of factors on each side; it involves an evaluation
of the 'overall balance.").
Florida International, 2015 WL 1208047 at * 3 (emphasis added). Such
weighing enables the:
determination of whether Plaintiffs mark is strong or weak.
Frehling, 192 F.3d at 1335. The stronger the mark, the greater
the scope of protection afforded to it. Id. [To that end, a] mark
may fall into one of four categories of distinctiveness, in
increasing levels of protection: (1) generic, (2) descriptive, (3)
suggestive, and (4) arbitrary. Id. These categories are based on
the relationship between the name and the service or good it
describes. Id. Generic marks refer to a particular genus or class of
goods or service providers . . . ; these marks are not entitled to
protection. Id. (citing Freedom Say. & Loan Ass'n v. Way, 757
F.2d 1176, 1182 n. 5 (11th Cir. 1985)). Descriptive marks describe
a characteristic or quality of an article or service. Id. Suggestive
marks "subtly connote something about the service so that a
customer could use his or her imagination and determine the
nature of the service." Freedom Savings, 757 F.2d at 1182 n. 5.
7
An arbitrary mark is a "word or phrase that bears no relationship
to the product." Frehling, 192 F.3d at 1335. Arbitrary marks are
the strongest of the four categories. Id. at 1335-36.
Id.
In many case the analysis (hence, discovery) extends to third party
use (or not) of the disputed trademark. "The strength of a mark may also
be affected by the degree to which third parties make use of the mark; the
less that third parties use the mark, the stronger it is, and the more
protection it deserves." Id. at * 4. Finally, "trademark rights are not
static and . . . the strength of a mark may change over time." Sovereign
Military Hospitaller, 2015 WL 6000633 at * 10 (quotes and cite omitted).
The public-university plaintiff in Florida International, which had
trademarked "Florida International University"/FIU," sued a for-profit
university, Florida National University ("FNU") for infringement.
Id. at
* 1. The court agreed that the two names "do sound similar," id. at * 6,
but "examined in totality this factor does not weigh in favor of a finding of
a likelihood of confusion." Id. Also, while the schools' degree programs
overlapped, id. at * 7-9, there was "little evidence of an overlap in the
audience of the schools advertising," id. at 9 (emphasis original), and the
difference in their applications standards and degrees that they issued
suggested that there were two vastly different consumer groups.
Considering the students' presumed sophistication and their time and
financial investment involved, they were unlikely to suffer trademark
confusion, so the Court ruled against FlU.
Id. at * 12.
The above standards evince a compendium of factors, which
themselves are gauged at different intensity levels (e.g., just how often
and at what level of focus and retention do consumers associate a slogan
or phrase with a particular product, and how often are they confused), and
thus authorize (or not) pretrial discovery requests and potential judicial
compulsion when such requests are not fulfilled. It therefore is not
surprising that various imaginative measures are used to discover, then
adduce, evidence to prove or disprove a trademark's classification (i.e.,
whether it is generic, arbitrary, etc.). Trademark litigants can try to
prove or disprove brand confusion, for example, with consumer surveys.
See Tartell v. South Fla. Sinus and Allergy Or., Inc., 790 F.3d 1253, 1257
(11th Cir. 2015) ("A plaintiff may prove secondary meaning with direct
evidence, such as consumer surveys, or circumstantial evidence."); accord,
Florida International, 2015 WL 1208047 at * 14; TracFone Wireless, 2015
WL 1954075 at * 10 n. 6. Experts can be used on that score, see, e.g.,
DJ
Florida International, 2015 WL 1208047 at * 14, as was done in this case.'
C. Remington's Motion to Compel
In Remington's motion to compel it complains that it has repeatedly
pressed DD
to identify all the ways in which it contends Remington infringed on
its marks. This was a topic in [Remington's Fed. R. Civ. P.]
30(b)(6) deposition notice [to DD]; however, DD did not prepare its
designee, Roger Mustian, to testify on it. When it became clear that
DD failed to prepare Mr. Mustian for the 30(b)(6) deposition, the
parties agreed to resume DD's deposition at a later date; however,
the second time was no better. DD again failed to prepare Mr.
Mustian, and while Mr. Mustian testified that "numerous"
examples of infringement existed in addition to those cited in DD's
Amended Complaint, he refused to identify them. Because of this
Remington does not know how it allegedly infringed on DD's
trademarks other than what is specifically alleged in the Amended
Complaint.
'' From Remington's summary judgment motion, in which it argues that "the Court
should grant summary judgment in Remington's favor on three separate issues, any
one of which is dispositive of DD's claims":
First, there is no likelihood of confusion. Despite the fact that DD has the
burden of proof on this issue, it has not only failed to present any evidence of
actual confusion (and admits it is aware of no such evidence), but it also failed to
obtain or produce any survey evidence tending to show a likelihood of confusion.
By contrast, Remington obtained two surveys from a leading consumer survey
expert (James Berger) showing that not only is there no likelihood of confusion
among relevant consumers, but also that DD's purported marks are weak at
best because they have not acquired any secondary meaning or distinctiveness.
Doc. 74 at 2. DD's response, in part: "Unfortunately Remington, a head-to-head
competitor against [DD], is a serial copyist of [DD] and its trademarks and advertising.
Remington has accordingly come to this Court with two (2) purchased 'surveys' and
virtually nothing else." Doc. 91 at 2; see also id. at 29-30, 32-37 (attacking
Remington's experts and referencing its motion to exclude them).
10
Doe. 62 at 2. "All the ways in which [DD] contends Remington infringed
on [DD's] marks," Remington contends, necessarily includes all examples
(and documents, like copies of Remington's past advertisements) on
which DD intends to prove infringement.
Id. at 4-12. So, it wants them
produced and DD's Rule 30(b)(6) witness, it concludes, should have been
prepared to testify about them.
Id.
Remington also asked DD how it "cleared" its own trademarks
before adopting them.' Doe. 62 at 2. That's important, it contends,
because DD accuses Remington of failing to take proper precautions
before it ran its offending (according to DD) advertisements.
Id.
Remington defends against that accusation by insisting that it did not
consider what it used in its advertising to be a DD trademark;
alternatively, it at most used it in a "non-trademark" way.
Id.
Remington also "disagrees that its failure to run a trademark clearance
search on non-trademark advertising is exceptional; it therefore seeks
8
One conducts a "clearance" search to ensure against using a product's marking that
might be confused with, and thus infringe upon, another's. From the United States
Patent and Trademark Officer's website: "This search engine allows you to search the
USPTOs database of registered trademarks and prior pending applications to find
marks that may prevent registration due to a likelihood of confusion refusal."
http ://www.uspto .gov/trademarks-getting-started/trademark-basics/searching-marksuspto-database
11
discovery into DD's trademark clearance process to see if DD holds itself
to this high standard." Id. at 3. In effect, then, Remington seeks DD's
demeanor evidence to bolster its defense (i.e., if DD did not see fit to
"clear" its own marks, then that's demeanor evidence that DD itself
believed that its marks are generic or otherwise not protectable). 9
Remington also wants DD to "disclose which of the advertisements
[that DD] produced have been published, or when and where they were
published." Doe. 62 at 3. That's relevant to DD's burden to prove
Remington's infringement since DD must prove that consumers exposed
to Remington's advertising "are likely to be confused" by it. 10 Id.
Contending that DD has improperly refused to produce this information,
Remington moves the Court to compel DD on those grounds, too.
2-23. It also wants attorney fees and costs as a discovery sanction.
Id. at
Id.
at 23-24.
DD dismisses Remington's "clearance data" quest as a wasteful diversion because
anyone, including Remington's own counsel, can run a search in the USPTO's
database; plus, that agency's Examiner was required to do so, and in fact reported the
results. Doc. 64 at 6-10.
This is a valid area of inquiry. Eleventh Circuit "cases do not require an
'identity' of sales or advertising methods; the standard is whether there is likely to be
significant enough overlap that a possibility of confusion could result." Sovereign
Military Hospitaller, No. 14-14251, - F.3d -, Slip Op. at 34 (quotes, citation, and
alterations omitted).
10
12
DD dismisses Remington's motion to compel outright, insisting
that, inter alia, it "unnecessarily wastes the judicial resource, is testing of
the discovery process, misconstrues the Record, inconveniences the Court
via an improper request to reopen discovery, is wrong on the merits and
the law, deals in distraction, and argues peripheral points -- and hence,
should be denied." Doc. 64 at 1. DD cites its amended complaint, where
it comprehensively set forth all of the ways in which it alleges that
Remington infringed DD's trademarks.
Id. at 3-6 (DD's response brief).
DD now feels that it "should not be burdened by Remington's bad faith
demand to be advised as to EACH and EVERY piece of advertising that
contains the accused phrases and logo -- as Remington itself knows and
has in its possession the identities of its own advertising materials which
have been clearly identified since the very beginning of this lawsuit."
Id. at 6. On top of all that, Remington's motion and the discovery
requests that support it are untimely.
DD says it would be unduly burdensome to produce "every single advertisement
that contains [DD's] asserted marks" because the representative examples that DD
has thus far produced should be more than enough to show how consumers encounter
its ads in the marketplace. Doc. 64 at 13. Remington responds that the discovery
rules do "not give DD the discretion to declare that its self-curated selection is truly
'representative." Doc. 78 at 13. It also cites legal authority for the proposition that
DD's advertising (hence, all of it) must be assessed as a whole for a secondary-meaning
determination. Id. at 13-14.
11
13
Remington's compel motion is not untimely. 12 And the Court
would be inclined to agree with Remington that DD cannot have it both
ways regarding its "infringement identification." Doc. 78 at 2-7. Trial
by ambush is not allowed, McCleod, 2014 WL 1616414 at * 2, and DD
must necessarily know how and when Remington infringed its marks in
order to meet the above-excerpted standards. Indeed, it obviously will
have to reveal it at trial. So the Court would be inclined to limit DD from
12
DD insists it is because Remington sent it written discovery that contemplated
responses beyond the Court's June 14, 2015 fact-discovery deadline (doc. 59) and did
not file its motion to compel until July 30, 2015. Doe 64 at 1-3. But as Remington
correctly notes, doe. 62 at 16-17; doe. 78 at 9, it timely served its discovery: "[Tihe
parties shall serve all written discovery on opposing parties and shall complete all
depositions within 140 days of the filing of the last answer of the defendants named in
the original complaint." S.D. Loc. R. 26.1(d)(i) (emphasis added). There is no
dispute that Remington served its discovery within those 140 days, and when the
Court issued its Scheduling Order, it did not intend to override Local Rule 26.1(d)(i).
Hence, service of discovery contemplating responses beyond the discovery period is
timely. DD's argument, by the way, would make sense if this Court's Local Rule 26
mirrored this district court's rule: "'[w]ritten discovery requests. . . must be served in
sufficient time that the response is due on or before the discovery cutoff date" and
failure to do so "obviates the need to respond or object to the discovery.. . or move for
a protective order." Danger v. Wachovia Corp., 2011 WL 1743763 at * 1 (S.D. Fla. May
6, 2011) (quoting S.D.Fla. Loc. R. 26.1(f)(2)). But it does not.
Meanwhile, "Rule 37 of the Federal Rules of Civil Procedure does not specify a
specific time limit for the filing of a motion to compel." RDLG, LLC v. RPM Group,
LLC, 2012 WL 3202851 at * 1 (W.D.N.C. Aug. 6, 2012). Alas, there is no "hard and
fast rule" here. Last Atlantis Capital LLC v. AGS Specialists, LLC, 71 F. Supp. 3d
760, 762 (N.D. Ill. 2014). It is true that Remington did not move to compel until July
30, 2015, doe. 62 -- over a month and a half beyond the discovery deadline. But given
the time it takes to fulfill the parties' duty to confer, see S.D. Loc. R. 26.5, the Court
finds Remington's motion to compel timely. See Antonetti v. Neven, 2013 WL
4786029 at * 2 (D. Nev. Sept. 5, 2013) (noting time ranges of more than 100 days
beyond the close of discovery in deeming a motion to compel as "unduly delayed").
I
introducing at trial evidence of allegedly infringing material other than
what DD has specifically identified in its Amended Complaint and has
timely produced to Remington within the discovery period here.
See
Brannies, 67 F. Supp. 3d at 1362 ("The discovery rules require the
disclosure of all relevant information so that ultimate resolution of
disputed issues in any civil action may be based on a full and accurate
understanding of the true facts.. . .") (quotes and cite omitted). To that
end, the Court's review of the record thus far inclines it to award
Remington Fed. R. Civ. P. 37 sanctions because DD, Remington has
shown, supplied it with an under-prepared Rule 30(b)(6) deposition
witness on the foregoing topic.' 3
13
Pause must be taken to review the subset of rules that apply here:
Because Rule 30(b)(6) witnesses testify on the corporation's behalf, courts
routinely hold that such deponents need not have personal knowledge on a
given subject, so long as they are able to convey the information known to the
corporation. See Dravo Corp. v. Liberty Mut. Ins. Co., 164 F.R.D. 70, 75
(D.Neb.1995) ("If the persons designated by the corporation do not possess
personal knowledge of the matters set out in the deposition notice, the
corporation is obligated to prepare the designees so that they may give
knowledgeable and binding answers for the corporation.") (citing Marker v.
Union Fidelity Life Ins. Co., 125 F.R.D. 121, 126 (M.D.N.C.1989)); see also Cruz
v. Coach Stores, Inc., No. 96 Civ. 8099, 1998 WL 812045, at *4 n. 3 (S.D.N.Y.
Nov. 18, 1998) ("Rule 30(b)(6) does not require a party to produce someone who
is 'most knowledgeable' but only someone whose testimony is binding on the
party."), affd in part, vacated in part on other grounds, 202 F.3d 560, 573 (2d
Cir.2000).
Gucci Am., Inc. v. Exclusive Imports Intern., 2002 WL 1870293 at *8 (S.D.N.Y. Aug. 13,
15
But the lion's share of this discovery dispute stands a reasonable
chance of being mooted if the district judge awards summary judgment to
Remington (again, its pending motion seeks complete judgment against
DD, doc. 74). Indeed, Remington's own "compel" reply brief underscores
the inextricable intertwinement of its compel and summary judgment
motions. Compare, e.g., doc. 78 at 11-12 (compel reply brief arguing that
DD must be compelled to produce DD's prior advertisements because they
go to the very "secondary meaning" argument that DD insists that its
marks have acquired, and "are also relevant to the likelihood of confusion
analysis. 1114); with doe. 74 at 2 (summary judgment motion arguing that
DD cannot show secondary meaning, citing Tana v. Dantanna's, 611 F.3d
2002). By the same token, the Rule 30(b)(6) deponent has: "an affirmative obligation
to educate himself as to the matters regarding the corporation." Concerned Citizens v.
Belle Haven Club, 223 F.R.D. 39, 43 (D. Conn. 2004). That "includes all matters that
are known or reasonably available to the corporation. Even if the documents are
voluminous and the review of the documents would be burdensome, the deponents are
still required to review them in order to prepare themselves to be deposed." In re
Neurontin Antitrust Litig., 2011 WL 2357793 at *5 (D.N.J. June 11, 2011).
14
Advertising efforts are assessed for "distinguishability strength" in resolving
whether a plaintiff has met his burden of establishing secondary meeting. Tartell,
790 F.3d at 1259 (sinus doctor failed to produce substantial evidence that his name
had acquired secondary meaning in minds of consumers for purposes of establishing
he had a protectible service mark under Lanham Act, in action against former partner
who registered domain names using variations of sinus doctor's name; evidence of
recognition of doctor's name in professional and academic settings, self-serving
statements about his reputation, and advertisements from previous sinus practice
wherein doctor's name was not prominently displayed or featured any differently than
his partner's, did not demonstrate actual recognition or what his name denoted to
consumer).
16
767 2 777-83 (11th Cir. 2010) (granting defendant restaurant owner
summary judgment; although the marks -- "Dan Tana's" versus
"Dantanna's" -- were somewhat similar and used in similar sales
channels, the plaintiff's mark was merely descriptive and thus weak, the
parties' restaurants and advertisements were different and vastly
separated geographically, there was no evidence of intent, and the
evidence of confusion was "nominal")); and id. at 3 (seeking cancellation
of DD's marks because they "are descriptive at best, and DD has
presented no evidence of secondary meaning or acquired
distinctiveness."). If Remington prevails on its summary judgment
motion, that would moot its interest in discovering information on how
DD generated distinctiveness (hence, secondary meaning) for its marks.
More importantly, a relevancy-based, "compel" decision here would
risk conflicting with the district judge's ruling on Remington's summary
judgment "Objection," filed as a summary-judgment-supporting motion to
exclude evidence (thus invoking Fed. R. Civ. P. 56(c)(2); see also Rule
56(h)). In it Remington contends:
DD prosecutes a trademark infringement case with one
trademark that admittedly describes DD goods, and another that
DD does not deny is a common graphic symbol. DD has no evidence
of actual confusion, and the only survey evidence shows no
17
likelihood of confusion and no secondary meaning for either mark.
Lacking the evidence necessary to prevail, DD resorts to
objectionable tactics in an effort to survive summary judgment. DD
produces witnesses it never disclosed in discovery, suddenly comes
up with evidence it previously refused to provide, and contradicts its
previous assertions in order to escape the impact of Remington's
surveys.
Because of the paucity of evidence supporting its case, DD's
claims are subject to summary judgment even if this Objection is
overruled. Nevertheless, Remington objects to DD's tactics, its
inadmissible and irrelevant evidence, and seeks to exclude them and
their fruit (primarily undisclosed, irrelevant, or utterly
mischaracterized evidence) from consideration by the Court.
Doc. 98 at 2 (footnotes omitted; emphasis added).
On summary judgment the district judge could rule, as a matter of
law, that (as Remington contends) DD has no protectable marks at all,
thus mooting the instant discovery dispute. Or, he could determine a
trademark classification or strength level that would warrant some
discovery, but not as much as Remington now seeks to compel. Put
another way, there is a reasonable probability that a summary judgment
ruling could sway the undersigned's ruling on what DD must now divulge,
how much, and whether it should be sanctioned. Conversely, a ruling
here may well conflict with a ruling there. It thus makes sense to
administratively deny Remington's compel motion for the moment.
Either party, for that matter, is free to invoke Fed. R. Civ. P. 56(d) if in
rr
fact discovery of more information can reasonably be shown to affect
summary judgment in its favor.
See McCleod, 2014 WL 1616414 at * 2.
III. CONCLUSION
The Court DENIES in part (i.e., the merits of) Remington's motion
to compel (doe. 62) without prejudice to its right to renew it following the
district judge's ruling on its summary judgment motion, doe. 74. The
Court DEFERS, until after the summary judgment ruling, Remington's
sanctions request. 15 Doe. 62 at 23-24; doe. 78 at 15-18. DD's motion for
a leave of absence is DENIED as moot. Doe. 65. Finally, the unopposed
motions to file summary judgment exhibits under seal (doe. 92 & 97) are
GRANTED.
SO ORDERED, this /Vday of October, 2015.
UNITED SThATES MAGISTRATE JUDGE
SOUTHERN DISTRICT OF GEORGIA
15
Hence, if Remington loses its summary judgment motion, it can renew its motion
to compel in toto. If it wins summary judgment and thus moots the discovery issues
here, it will still be free to renew its request for sanctions. The district judge's
summary judgment ruling, for that matter, may well impact the strength of the
relevancy showing that necessarily undergirds Remington's sanctions request.
115]
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