Innovative Communication Systems, Inc. v. Innovative Computing Systems, Inc.
ORDER GRANTING Defendant's 28 Motion to Expedite ruling on 13 Motion to Compel. ORDER Granting Plaintiff's Opposed 18 Motion for Leave to Extend Page Limit and for Time to File Response. ORDER GRANTING IN PART and DENYING IN PART Defendant's 13 Motion to Compel Plaintiff to Answer to Interrogatories. Signed by Judge Andrew W. Austin. (klw) Modified on 7/16/2014 to correct/add text (klw).
IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF TEXAS
Before the Court is Defendant’s Motion to Compel Plaintiff’s Answers to Interrogatories
(Dkt. No. 13); Plaintiff’s Response (Dkt. No. 15); Plaintiff’s Amended Response (Dkt. No. 17); and
Defendant’s Reply (Dkt. No. 24).1 Also before the Court are Plaintiff’s Opposed Motion for Leave
to Extend Page Limitation and for Time to File Response (Dkt. No. 18); Defendant’s Response (Dkt.
No. 19); and Plaintiff’s Reply (Dkt. No. 23). The District Court referred the above-motions to the
undersigned Magistrate Judge for resolution pursuant to 28 U.S.C. §636(b)(1)(A), FED. R. CIV. P.
72, and Rule 1(c) of Appendix C of the Local Rules of the United States District Court for the
Western District of Texas, Local Rules for the Assignment of Duties to United States Magistrate
Judges. The Court held a hearing on the above-motion on May 6, 2014.
I. DEFENDANT’S MOTION TO COMPEL
As an initial matter, the Court briefly addresses Plaintiff Innovative Communication Systems,
Inc.’s (“Plaintiff”) Opposed Motion for Leave to Extend Page Limit and for Time to File Response.
Dkt. No. 18. Plaintiff had failed to adhere to the Local Rules in filing its response to Defendant
Innovative Computing Systems, Inc.’s (“Defendant”) Motion to Compel. Plaintiff’s Response was
Defendant also filed a Motion Requesting an Expedited Ruling on its Motion to Compel
(Dkt. No. 28), which the Court hereby GRANTS.
17 pages and filed 14 days after Defendant filed its motion, thereby exceeding the page and time
limitations on such motions. See Local Rule CV-7(e) (providing that responses to nondispositive
motions shall be limited to 10 pages and filed 7 days after the motion). In its motion for leave,
Plaintiff contended that its oversight of the response deadline was (1) inadvertent, and (2) not the
result of any bad faith intent to delay the proceedings and would not prejudice Defendant. Dkt. No.
18, ¶¶ 3–5. Plaintiff further argued that it should be permitted to exceed the page limitations
provided in the Local Rules because it was required to explain its objection for each interrogatory
as well as address other issues, such as requesting a protective order and attorney’s fees. Id. ¶¶ 6–13.
In response, Defendant submitted that Plaintiff fails to adequately demonstrate that it should be
allowed to exceed the page or time limits in filing its response. Dkt. No. 19. Defendant noted that
(1) Plaintiff’s only excuse for failing to timely file its response was that its counsel inadvertently
overlooked a change in the Local Rules that occurred two years ago, and (2) the issues presented in
Defendant’s Motion to Compel were not particularly complex. Id. Although the Defendant’s
arguments are on point, the Court will nevertheless permit the filing of the response. Accordingly,
Plaintiff’s Opposed Motion for Leave to Extend Page Limit and for Time to File Response (Dkt. No.
18) should be GRANTED.
With regard to the merits of Defendant’s Motion to Compel, Defendant generally argues that
Plaintiff is improperly withholding discovery because (1) three of the interrogatories at issue consist
of standard contention interrogatories to which Plaintiff should provide responses; and (2) Plaintiff’s
contention that the remaining interrogatory asks for trade secrets is without merit because this Court
has previously ordered trade secrets to be produced in response to interrogatory requests.
Interrogatory No. 10: State all facts and identify all documents supporting or otherwise
concerning your contention that “ ‘ICS’ is famous and distinctive.”
Interrogatory No. 11: State all facts and identify all documents supporting or otherwise
concerning your contention that Plaintiff’s “client base operates nationwide, and
includes several national retail and restaurant chains.”
Interrogatory No. 12: State all facts and identify all documents supporting or otherwise
concerning your contention that Plaintiff’s “mark is widely recognized.”
Plaintiff objects to these interrogatories’ request for a “narrative account” of the legal claims
in Plaintiff’s Original Petition. Citing case law from district courts in other circuits, Plaintiff
complains that requiring it to provide all facts and identify all documents would be a difficult task
and could potentially expose it to objections at trial if it somehow overlooked a fact or document.
Dkt. No. 17, ¶ 5. Although Plaintiff acknowledges that contention interrogatories are generally a
proper means of written discovery, Plaintiff argues that Defendant’s interrogatories are not permitted
under Rule 33. Relatedly, Plaintiff further objects to Defendant’s Request for Production No. 13,
which asks for “all documents identified in response to any interrogatory served on Plaintiff in this
action.” Plaintiff claims that such a request seeks production of “documents it relied on to support
a claim, defense or contention in the litigation” and is not reasonably particular in its request. Id.,
¶¶ 7–8. On Interrogatory No. 11, Plaintiff submits that its Original Petition does not make the
geographic scope of Plaintiff’s use of the “ICS” mark relevant and that it is Defendant who has
alleged that Plaintiff did not use the mark in interstate commerce at the time of registration with the
United States Patent and Trademark Office (“USPTO”). Id., ¶¶ 11–14. Responding, Defendant
contends that its Interrogatories Nos. 10–12 are standard contention interrogatories that are proper
under Rule 33. Defendant notes that district courts throughout Texas have acknowledged that
contention interrogatories are a permissible form of discovery. Dkt. No. 13 at 3. Defendant argues
that the interrogatories each ask for information relevant to the claims in this case.
Federal Rule of Civil Procedure 33(a)(2) provides that “[a]n interrogatory is not objectionable
merely because it asks for an opinion or contention that relates to fact or the application of law to
fact . . . .” While the Court agrees that Defendant’s Interrogatory Nos. 10–12, taken literally, may
be overly broad and burdensome, the Court rejects Plaintiff’s position that it need not provide any
substantive response to this set of interrogatories.2 As noted by Defendant, this Court has stated that
Contention interrogatories may properly ask for the facts that support an allegation
or defense as well as the identities of knowledgeable persons and supporting
documents for the facts supporting an allegation or defense. Contention
interrogatories include questions asking an opposing party to state all the facts upon
which it bases some specified contention and questions asking an opponent to state
all the evidence on which it bases some specified contention.
Malibu Consulting Corp. v. Funair Corp., No. SA–06–CA–0735, 2007 WL 3995913 at *1 n.1
(W.D. Tex. Nov. 14, 2007) (emphasis added). Furthermore, other district courts in this circuit have
previously ordered parties to provide narrative answers to interrogatory requests. See, e.g., Steadfast
Ins., Co. v. Golden Restaurants, Inc., No. 3–08–CV–1383, 2009 WL 1683605 at *2 (N.D. Tex. June
16, 2009) (requiring a narrative answer to be provided in response to disputed interrogatories);
Alexander v. Hartford Life and Acc. Ins. Co., No. 3–07–CV–1486, 2008 WL 906786 at *4 (N.D.
Tex. Apr. 3, 2008) (noting that “a court has discretion to require narrative answers to contention
interrogatories”); see also In re Pabst Licensing GmbH Patent Litig., No. 99–MD–1298, 2001 WL
It is clear from the parties’ communication that a “good-faith attempt to resolve the matter
by agreement” did not occur in accordance with the Local Rules. See Local Rule CV-7(i) (emphasis
added). Communicating solely via letter and refusing to schedule a conference regarding discovery
disputes does not constitute a “good-faith attempt” to resolve the matter. The parties are reminded
to refer to the Local Rules in the future.
797315 (E.D. La. July 12, 2001) (ordering that narrative answers be provided to interrogatories).
Plaintiff has not cited to any controlling or persuasive authority from the Fifth Circuit that calls into
question a court’s discretion to require a party provide narrative answers to contention
Having said this, Interrogatory Nos. 10–12, read literally, could be viewed as burdensome.
This, however, does not mean that Plaintiff should not have to provide any response at all. Thus,
with respect to Interrogatory Nos. 10 and 12, Plaintiff shall “generally explain” the factual basis by
identifying the principal or material facts and documents that support its assertions that the “ICS”
mark is “famous and distinctive” and “widely recognized.”3 See Alexander, 2008 WL 906786 at *4;
Dkt. No. 1, Exhibit A [hereinafter Original Petition], ¶ 29. Such a response to Interrogatory Nos.
10 and 12 limits Plaintiff’s burden to those principal or material facts and documents while
providing Defendant’s with the necessary information for its defense.4 As for Interrogatory No. 11,
the Court notes that its resolution of the issues related to Interrogatory No. 13 below should resolve
the dispute regarding Interrogatory No. 11. Moreover, Defendant was unable to identify at the
hearing precisely where in Plaintiff’s pleadings it asserted that its “client base operates nationwide,
and includes several national retail and restaurant chains.” Accordingly, Defendant’s Motion to
Compel as it relates to Defendant’s Interrogatory No. 11 is DENIED.
Even the District of Kansas, which Plaintiff relies on heavily for its assertions regarding
narrative answers to contention interrogatories, has stated that “interrogatories may ask for the
principal or material facts [and supporting documents that] support a claim or defense.” See Gov.
Benefits Analysts, Inc. v. Gradient Ins. Brokerage, Inc., No. 10–CV–2558, 2012 WL 3238082 at *9
(D. Kan. Aug. 7, 2012).
As to what constitutes a material or principal fact or document, the Court directs the parties
to the definition and factors provided in the Lanham Act under 15 U.S.C. § 1125(c)(2)(A).
Defendant’s Interrogatory No. 13 requests that Plaintiff “[i]dentify all of your client’s [sic]
located outside of Texas, and the month and year they became a client.” Defendant asserts that this
information is relevant to rebut Plaintiff’s claims that it has engaged in interstate use of the “ICS”
mark, the alleged fame of the mark, as well as Defendant’s counterclaims seeking cancellation of
the mark. Plaintiff objects to the production of this information because it would disclose trade
secrets, as the identity of Plaintiff’s clients were compiled through the expenditure of significant
time, effort, and money. Alternatively, Plaintiff requests that the Court narrow the scope of
Defendant’s discovery requests to a limited “representative” number of clients so that its entire client
list is not exposed.
Even accepting Plaintiff’s argument that its client list is a trade secret, the Court disagrees
with Plaintiff that the information is not discoverable. Although Plaintiff highlights that its client
list is confidential and valuable, that does not necessarily render the information undiscoverable.
The Federal Rules of Civil Procedure provide that “[p]arties may obtain discovery regarding any
nonprivileged matter that is relevant to any party’s claim or defense.” FED. R. CIV. P. 26(b)(1)
(emphasis added). Additionally, the information “need not be admissible at trial if the discovery
appears reasonably calculated to lead to the discovery of admissible evidence.” Id. Consequently,
“courts construe Rule 26 broadly, and generally hold a request for discovery should be allowed
unless it is clear that the information sought can have no possible bearing on the claim or defense
of a party.” United Servs. Auto. Ass’n v. Mitek Sys., Inc., 289 F.R.D. 244, 246 (W.D. Tex. 2013)
(internal quotations omitted). Furthermore, the fact that the information requested involves trade
secrets does not prohibit its discovery. With regard to trade secrets, the Advisory Committee Notes
to Rule 26 explicitly state that “courts have not given trade secrets automatic and complete immunity
against disclosure, but have in each case weighed their claim to privacy against the need for
In this case, Plaintiff has alleged trademark infringement and unfair competition claims
against Defendant. See Original Petition. Among its affirmative defenses and counterclaims,
Defendant contends that Plaintiff committed fraud in the procurement of the trademark. Dkt. No.
2. More specifically, Defendant claims that Plaintiff falsely stated in its application to the USPTO
that the “ICS” trademark had been used in interstate commerce. Id. Based on the parties’ allegations
alone, it is clear that information concerning Plaintiff’s clients located outside Texas are relevant to
the case. Information concerning Plaintiff’s clients is certainly relevant to Defendant’s counterclaim
that Plaintiff committed fraud upon the USPTO in stating that it had used the “ICS” mark in
interstate commerce. Additionally, for Plaintiff to prevail on its trademark infringement claim, it
must (1) establish ownership in a legally protectible mark, and (2) demonstrate a likelihood of
confusion. Bd. of Supervisors for La. State Univ. Agric. & Mech. Coll. v. Smack Apparel Co., 550
F.3d 465, 474 (5th Cir. 2008). Assuming Plaintiff can establish ownership in the “ICS” mark, the
court must then consider a nonexhaustive list of factors to determine the likelihood of confusion,
including “(1) the type of mark allegedly infringed, (2) the similarity between the two marks, (3) the
similarity of the products or services, (4) the identity of the retail outlets and purchasers, (5) the
identity of the advertising media used, (6) the defendant’s intent, and (7) any evidence of actual
confusion.” Id. at 478 (emphasis added); see also Paulsson Geophysical Servs., Inc. v. Sigmar, 529
F.3d 303, 310 (5th Cir. 2008). The Fifth Circuit has added an additional factor: (8) the degree of
care exercised by potential purchasers. Smack Apparel, 550 F.3d at 478; Paulsson Geophysical
Servs., Inc., 529 F.3d at 310. The existence of clients outside of Texas is relevant to both Factors
4 and 8. At the hearing, Defendant further stated that this information was particularly important
because its primary customers are law firms. See also Dkt. No. 24 at 4. Defendant noted that if, for
example, discovery were to reveal that Plaintiff does not service any law firms, such evidence would
weigh against a likelihood of confusion.
Plaintiff responds that its client list is maintained on a password-protected software program
and is only accessible by a small number of individuals. Dkt. No. 17, ¶¶ 18–19. Plaintiff further
submits that its client list is not available as a physical list and such information is not stored in a
manner which would enable outside individuals to compile a list of its clients. Id. ¶ 20. Plaintiff
also stresses that its client list would be particularly valuable to Defendant, especially considering
that the parties sell and market similar services. Id. ¶¶ 20–24.5
After weighing Plaintiff’s claims of privacy against the need for disclosure, the Court finds
that the information requested by Defendant’s Interrogatory No. 13 should be disclosed. As
previously discussed, information concerning Plaintiff’s clients are relevant to the allegations made
by both parties. Any concerns Plaintiff has about the disclosure of its client list may be addressed
Plaintiff also attempts to distinguish United Servs. Auto. Ass’n v. Mitek Sys., Inc., 289
F.R.D. 244 (W.D. Tex. 2013). Plaintiff claims that unlike the party in Mitek Systems, Plaintiff did
not place its trade secrets at issue here and does not claim reliance upon its interstate use of the
“ICS” mark to support its trademark registration. Dkt. No. 17, ¶ 30. However, information
concerning Plaintiff’s clients is relevant to Plaintiff’s own claims. The Original Petition clearly
states a claim for trademark infringement against Defendant. As noted previously, a trademark
infringement claim necessarily requires a court to consider whether there is a likelihood of confusion.
Among the factors listed by the Fifth Circuit to determine this issue are the identity of the retail
outlets and purchasers and the degree of care exercised by the purchasers. Smack Apparel, 550 F.3d
at 478; Paulsson Geophysical Servs., Inc., 529 F.3d at 310. Thus, by alleging a trademark
infringement claim, Plaintiff has placed the identities of its clients at issue because such information
is relevant to determining whether a likelihood of confusion exists.
through a protective order, which the Court will enter simultaneously with this order. The protective
order permits documents to be designated as “For Counsel or Attorneys Only,” which will address
Plaintiff’s primary objection to producing the information.
Given the clear relevance of the
information sought and the existence of a protective order, the Court concludes that the need for
disclosure outweighs Plaintiff’s claims of privacy. Accordingly, Defendant’s Motion to Compel
with regard to Interrogatory No. 13 is GRANTED.
Both parties move for attorney’s fees in relation to Defendant’s Motion to Compel. Rule
37(5)(C) provides that “[i]f the motion is granted in part and denied in part, the court may . . . , after
giving an opportunity to be heard, apportion the reasonable expenses for the motion.” FED. R. CIV.
P. 37(5)(C) (emphasis added). Having considered the parties’ requests, the Court declines to award
attorney’s fees to either party.
In accordance with the foregoing discussion, Defendant Innovative Computing Systems,
Inc.’s Motion to Compel (Dkt. No. 13) is GRANTED IN PART and DENIED IN PART as set
forth above. Plaintiff Innovative Communication Systems, Inc., shall produce the responsive
documents and revise the pertinent discovery responses on or before July 31, 2014, or some later
date mutually agreed upon by the parties.
SIGNED this 16th day of July, 2014.
ANDREW W. AUSTIN
UNITED STATES MAGISTRATE JUDGE
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