Flower Manufacturing, LLC v. Careco, LLC

Filing 21

Order regarding discovery dispute related to interrogatories. Defendant's request to phase discovery is hereby denied. See order for supplemental briefing deadlines. Judge James G. Carr on 3/19/19. (C,D)

IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF OHIO
WESTERN DIVISION

Flower Manufacturing, LLC,

Case No. 3:18CV547

Plaintiff
v.

ORDER

Careco, LLC,
Defendant

This is a trademark infringement case.
Plaintiff Flower Manufacturing, LLC (Flower) and defendant Careco, LLC produce air
freshening products. Flower markets its products, chiefly, hangtag car air fresheners, using its
“Family of Bomb Marks.” The family includes, for example, Flower’s “Cherry Bomb” mark.
Careco sells hanging air fresheners, air freshening sprays, and other products using its “Scent
Bomb” mark.
Flower alleges that Careco’s “Scent Bomb” mark infringes on its “Family of Bomb
Marks” in violation of the Lanham Act, 15 U.S.C. §§ 1051, et seq. Flower also raises Ohio
statutory and common-law claims against Careco.
The parties have a discovery dispute. Pursuant to my order following a February 13, 2019
telephone conference, they have fully briefed their positions.

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Background
On November 5, 2018, Careco responded to Flower’s discovery requests, which included
interrogatories and requests for production of documents. The requests relevant to their dispute
are:
Request for Production No. 15. Flower requested annual sales data “[f]or each
product sold under [Careco’s] SCENT BOMB MARK.” (Doc. 18-2 at 11). Careco
produced the requested sales data for “its hanging circle air freshener products” (Doc.
20-2) but objected to the request as applied to its other products claiming that such
information is: (1) not relevant and (2) “proprietary business information of a
competitor.” (Doc. 18-2 at 11).
Interrogatory No. 4 and Request for Production Nos. 5 and 7. Flower asked
Careco for information about its customers and marketing strategies.
Specifically, Flower requested that Careco “[d]escribe the target market(s) for each of
the goods and services” Careco sells using the Scent Bomb mark, including “the type
of consumer(s) and/or customer(s) targeted, the demographic of the consumer(s)
and/or customer(s) targeted, and the geographic scope of the target market(s).” (Doc.
18-1 at 6 (Interrog. No. 4)). Flower also requested that Careco produce “[a]ll
advertising and promotional DOCUMENTS CONCERNING” goods sold using the
Scent Bomb mark and “documents sufficient to identify the channels of trade through
which” Careco sells its Scent Bomb products. (Doc. 18-2 at 6 (Reqs. for Production
Nos. 5 and 7)).
Careco responded to the requests by: generally describing its target market (Interrog.
No. 4); agreeing to produce “representative samples of its advertising and
promotional materials” (Req. for Production No. 5); and agreeing to produce its
channels of trade but withholding invoices that would identify customers (Req. for
Production No. 7). Otherwise, Careco objected to the requests, asserting that they
“seek[] proprietary business information of a competitor.” (Doc. 18-1 at 6; Doc. 18-2
at 6).
Interrogatory No. 5. Flower asked Careco to identify its manufacturers. Careco
objected to this request arguing that it “seeks proprietary business information of a
competitor.” (Doc. 18-1 at 5 (Interrog. No. 5)).
On January 30, 2019, Flower sent Careco a letter protesting Careco’s objections and
asking Careco to supplement its discovery responses. (See Doc. 20-1). Careco did not provide
additional information.

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Flower sought my intervention via a February 12, 2019 letter. (Doc. 20-2). In a February
13, 2019 discovery conference, I asked the parties to brief their dispute. 1
Discussion
Federal Rule of Civil Procedure 26 prescribes the scope of discovery: “Parties may obtain
discovery regarding any nonprivileged matter that is relevant to any party’s claim or defense and
proportional to the needs of the case[.]” Fed. R. Civ. P. 26(b)(1). “[I]t is well established that the
scope of discovery is within the sound discretion of the trial court.” Chrysler Corp. v. Fedders
Corp., 643 F.2d 1229, 1240 (6th Cir. 1981) (internal citation omitted). “Rule 26 is to be liberally
construed to permit broad discovery.” Recycled Paper Greetings, Inc. v. Davis, 2008 WL
440458, *2 (N.D. Ohio) (Gwin, J.) (citing United States v. Leggett & Platt, Inc., 542 F.2d 655,
657 (6th Cir. 1976)).
I. The Sales Information Flower Seeks Is Relevant
Careco argues that the sales data Flower requested (other than the information Careco
already produced) is irrelevant to the issue of liability. I disagree. 2
“[T]o make out a claim for [trademark] infringement,” a plaintiff must show:

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Careco argues in its brief that only Request for Production No. 15 is properly before the court
because Flower referenced only that request in its letter requesting a discovery conference. (Doc.
19 at 3). I disagree. In its January 30, 2019 letter, Flower asked Careco to supplement
Interrogatories Nos. 4-7 and Request for Production Nos. 5-7, 9, and 15. Flower also addressed
those requests in its pre-discovery conference statement to the court. (Doc. 20-3). Accordingly,
each of these requests is properly before me.
Requests for Production Nos. 6 and 9 and Interrogatories Nos. 6 and 7 are easily resolved.
Careco has indicated that it: (1) has no responsive documents to Request for Production No. 6;
(2) has no additional responsive materials to Request for Production No. 9; and (3) it provided a
complete response to Interrogatories Nos. 6 and 7. (Doc. 19 at 4-6). I will require Careco to
supplement its responses accordingly.
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I therefore deny Careco’s request to split discovery into a liability phase and a damages phase.
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(1) ownership of a specific service mark in connection with specific services [or
products]; (2) continuous use of the service mark; (3) establishment of secondary
meaning if the mark is descriptive; and (4) a likelihood of confusion amongst
consumers due to the contemporaneous use of the parties’ service marks in
connection with the parties’ respective services [or products].
Homeowners Grp., Inc. v. Home Mktg. Specialists, Inc., 931 F.2d 1100, 1105 (6th Cir. 1991)
(citing 15 U.S.C. § 1125(a)).
Courts assess likelihood of confusion by weighing eight factors:
1. strength of the plaintiff’s mark;
2. relatedness of the goods;
3. similarity of the marks;
4. evidence of actual confusion;
5. marketing channels used;
6. likely degree of purchaser care;
7. defendant’s intent of the defendant in selecting the mark; and
8. likelihood of expansion of the product lines.
Wynn Oil Co. v. Thomas, 839 F.2d 1183, 1186 (6th Cir. 1988) (citing Frisch’s Rest., Inc. v.
Shoney’s Inc., 759 F.2d 1261, 1266 (6th Cir. 1985)).
In its opening brief, Flower identifies two alternative trademark infringement theories it
plans to pursue: the common “palming off” theory and the “reverse confusion of sponsorship”
theory. (See Doc. 18 at 5-6).
Courts in palming off cases determine whether consumers will likely be confused
“between directly competing goods . . . over the source of their origin.” Ameritech, Inc. v. Am.
Info. Techs. Corp., 811 F2d 960, 964 (6th Cir. 1987). Careco would have me believe that courts
do not review competitors’ sales data to assess likelihood of confusion. (Doc. 19 at 8 (collecting
cases)). At least one court in this circuit, however, compared relative sales of two companies
when determining likelihood of confusion in a palming off case. See Induct-O-Matic Corp. v.
Inductotherm Corp., 1982 WL 52120, *2, *4, *6 (E.D. Mich.); remanded on other grounds, 747
F.2d 358 (6th Cir. 1984). Moreover, that such information might not be “necessary to determine

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a likelihood of confusion” (Doc. 19 at 8) misapplies the discovery standard; the information need
only be relevant to Flower’s claim. Fed. R. Civ. P. 26(b)(1).
The sales information is most relevant to Flower’s reverse confusion of sponsorship
theory. Plaintiffs advancing this theory allege that “the junior user saturates the market with a
similar trademark and overwhelms the senior user. The public comes to assume the senior user’s
products are really the junior user’s or that the former has become somehow connected to the
latter.” Ameritech, Inc., supra, 811 F.2d at 964.
The amount of Careco’s sales under its Scent Bomb Mark is relevant to determining
market saturation (or, as the case may be, lack thereof). For example, the Tenth Circuit in Big O
Tire Dealers, Inc. v. Goodyear Tire & Rubber Co., 561 F.2d 1365, 1367 (10th Cir. 1977), a
reverse confusion case, compared parties’ sales data. Similarly, the Third Circuit, likewise in a
reverse confusion case, Fisons Horticulture, Inc. v. Vigoro Industries, Inc., 30 F.3d 466, 471 (3d
Cir. 1994), reviewed the defendant’s sales. See also Pep Boys Manny, Moe & Jack v. Goodyear
Tire & Rubber Co., 2002 WL 524001, *6 (E.D. Pa.) (same); Eyebobs, LLC v. Snap, Inc., 259 F.
Supp. 3d 956, 974 (D. Minn.) (explaining defendant’s sales volume is relevant to reverse
confusion theory).
Careco essentially admits that the sales information is relevant to the reverse confusion of
sponsorship theory. (See Doc. 19 at 10). That this theory might “require substantially more than
just sales figures” does not make those figures irrelevant. (See id.). 3

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Careco also argues that I should bar discovery of the requested sales data because Flower “is
not likely to succeed on the merits of the claim,” making the sales data irrelevant. (Doc. 19 at 7
(citing Recycled Paper Greetings, Inc., supra, 2008 WL 440458 at *2, *4)). I disagree.
In one sentence with no factual analysis, Careco concludes that “there is no likelihood of
confusion between the parties’ respective marks.” (Doc. 19 at 7). This lone assertion does not
show Flower is unlikely to succeed on its infringement claim.
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II. Balancing Relevance and Need With Risks of Disclosure
Careco seeks to prevent Flower from discovering the information requested because,
Careco maintains, it is confidential. Flower, for its part, offered to negotiate a protective order
with Careco. (See Doc. 20-1). Careco declined.
“The court may, for good cause, issue an order to protect a party or person from
annoyance, embarrassment, oppression, or undue burden or expense,” by “requiring that a trade
secret . . . not be revealed or be revealed only in a specified way.” Fed. R. Civ. P. 26(c)(1)(G).
To determine whether I should allow Flower to obtain the information sought, I must “balance[]
the need for [Flower] to have access to relevant and necessary information with [Careco’s]
interest in preventing a potential competitor” from accessing its confidential material. See R.C.
Olmstead, Inc. v. CU Interface, LLC, 606 F.3d 262, 269 (6th Cir. 2010). “It is within a district
court’s sound discretion to determine whether” confidential information is “relevant and whether
the need outweighs the harm of disclosure.” Id. (internal quotations and citation omitted).
I must first determine, then, whether the information Flower seeks is relevant and
necessary to its claims.

Moreover, Recycled Paper Greetings, Inc., supra, 2008 WL 440458, which Careco cites, is not
like this case. The plaintiff in that case claimed that defendant breached a fiduciary duty and
disclosed confidential business information to a third-party competitor. The plaintiff subpoenaed
the competitor for confidential business information. The court quashed the subpoenas because
of their breadth and because defendant had disclosed much of the requested information already.
Id. at *4. The court also noted that, in separate but related litigation, a court denied preliminary
injunction, finding plaintiff was unlikely to succeed on its fiduciary duty claim or establish that a
trade secret existed. Because the materials sought from the competitor went to the issues
addressed in the separate litigation, the court found that the burden to the competitor outweighed
any need for the information sought. Id. at *5.
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A. Flower’s Need for the Sales and Customer Information
Outweighs Careco’s Interest in Keeping It Confidential
As explained above, the sales information is relevant to Flower’s claim. The sales
information is also necessary for Flower’s claim, especially insofar as Flower plans to pursue a
reverse confusion of sponsorship theory, which requires that Flower show that Careco saturated
the market.
The customer and marketing information is relevant and necessary to the likelihood of
confusion analysis, specifically, the “marketing channels” factor:
Obviously, dissimilarities between the predominant customers of a plaintiff's and
defendant's goods or services lessens the possibility of confusion, mistake, or
deception. Likewise if the services of one party are sold through different
marketing media in a different marketing context than those of another seller, the
likelihood that either group of buyers will be confused by similar service marks is
much lower than if both parties sell their services through the same channels of
trade.
Homeowners Grp., Inc., supra, 931 F.2d at 1110.
The court in Homeowners Group, Inc. reviewed “ample evidence as to whom the parties’
customers are and the marketing context in which their services are sold,” including the parties’
advertisements. Id. Accordingly, Careco’s customers and its marketing and advertising strategies
are relevant to Flower’s claim.
Moreover, I can mitigate Careco’s risk of disclosure by requiring that the parties
exchange this information on an “attorneys’ eyes only” basis. See R.C. Olmstead, Inc., 606 F.3d
at 269-70 (upholding district court’s decision to limit disclosure of confidential discovery to
attorneys and expert witnesses). I will therefore allow Flower to discover the material on the
condition that only attorneys of record in this case may view it.

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B. The Parties Have Not Shown Whether Careco’s
Manufacturer Information Is Relevant
It is unclear whether Careco’s manufacturers’ identities are relevant to Flower’s claims.
Neither party has identified, and I have not found, legal authority explaining whether
identities of an alleged infringer’s manufacturers are relevant in a trademark infringement case.
Yet, I must balance that information’s relevance – and its necessity – with Careco’s interest in
keeping it secret. R.C. Olmsted, Inc., supra, 606 F.3d at 269. I will therefore require the parties to
submit supplemental briefing about this information’s relevance and necessity in this case.
Conclusion
It is, therefore,
ORDERED THAT
1. Defendant Careco, LLC shall produce, by April 1, 2019, the information
requested in plaintiff Flower Manufacturing, LLC’s Interrogatory No. 4 and
Request for Production Nos. 5, 7 and 15. Careco shall produce such information
with an “attorneys’ eyes only” designation, and only attorneys of record in this
case may view the information. Disclosure of material so marked to persons other
than attorneys of record in this case shall result in sanctions to be determined after
notice is provided to the court that a party violated this order.
2. Plaintiff’s brief about the relevance and necessity of the information requested in
Interrogatory No. 5 shall be due on or before April 1, 2019; defendant’s response
to be due on or before April 8, 2019; plaintiff’s reply to be due on or before April
15, 2019.
3. Defendant’s request to phase discovery is hereby denied.

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4. Defendant shall supplement its responses to Interrogatories Nos. 6 and 7 and
Request for Production Nos. 6 and 9 in accordance with this opinion.
So ordered.
/s/ James G. Carr
Sr. U.S. District Judge

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