1 2 3 4 UNITED STATES DISTRICT COURT 5 NORTHERN DISTRICT OF CALIFORNIA 6 SAN JOSE DIVISION 7 8 OUTDOOR PRO SHOP, INC., Case No. 20-cv-05999-BLF (VKD)

9 Plaintiff,

ORDER RE FEBRUARY 16, 2022

10 v. DISCOVERY DISPUTE

11 MONSTER ENERGY COMPANY, Re: Dkt. No. 42 Defendant. 12

13 14 Plaintiff Outdoor Pro Shop, Inc. (“OPS”) and defendant Monster Energy Company 15 (“Monster”) ask the Court to resolve several disputes concerning Monster’s discovery from OPS. 16 Dkt. No. 42. The Court held a hearing on the matter on March 8, 2022. Dkt. No. 44. 17 For the reasons explained at the hearing and below, the Court resolves the disputes as set 18 forth below. 19 I. BACKGROUND 20 OPS asserts claims for trademark infringement, false designation of origin, and unfair 21 competition against Monster. Dkt. No. 25. Monster denies liability, and asserts its own claims for 22 trademark infringement, false designation of origin, and unfair competition against OPS. Dkt. No. 23 26. OPS denies it is liable to Monster. Dkt. No. 27. Among other things, the parties dispute (1) 24 the strength of the parties’ marks, (2) the nature, extent, and timing of the parties’ use of the marks 25 in commerce, (3) the similarity of the parties’ goods and services, (4) whether and under what 26 circumstances there is likelihood of confusion, and (5) whether either party has suffered damages, 27 and if so, in what amount.

II. DISCUSSION

1 A. Legal Standard 2 A party may obtain discovery of any matter that is relevant to a claim or defense and that is 3 “proportional to the needs of case, considering the importance of the issues at stake in the action, 4 the amount in controversy, the parties’ relative access to relevant information, the parties’ 5 resources, the importance of the discovery in resolving the issues, and whether the burden or 6 expense of the proposed discovery outweighs its likely benefit.” Fed. R. Civ. P. 26(b)(1). 7 B. Documents regarding advertising and promotion of OPS Marks 8 Monster’s RFP 14 asks for: “All advertisements, catalogs, brochures, mailers, marketing 9 emails, videos, fliers and other marketing materials that OPS purchased or disseminated since 10 2000.” Monster’s RFP 36 asks for: “All catalogs, print advertisements and television/radio spots 11 that OPS has distributed or placed since 2000, whether or not they relate to the OPS Marks,1 and 12 all banners, website ads, social media ads/posts or other promotional items that You have used to 13 promote the OPS Marks since 2000.” OPS objects that it should not be required to produce 14 responsive documents that do not include the disputed OPS Marks or the word “Monster.” 15 Monster argues that OPS claims to have engaged in extensive advertisement and promotion of the 16 OPS Marks, and that the disputed discovery is directed to evidence supporting or undermining that 17 claim. 18 OPS’s use of the disputed marks in advertising or promotion may be considered in 19 assessing whether the marks have acquired secondary meaning.2 Filipino Yellow Pages, Inc. v. 20 Asian Journal Publications, Inc., 198 F.3d 1143, 1151 (9th Cir. 1999) (secondary meaning can be 21 established through amount and manner of advertising)). In addition, the timing of OPS’s use in 22 commerce of the disputed marks bears on the issue of priority. OPS must produce documents in 23 its possession, custody or control sufficient to show all advertising and promotion (in whatever 24 form) that included the OPS Marks or the word “Monster” since 2000. OPS may not satisfy its 25

26 1 Monster defines “OPS Marks” as: “the marks MONSTER FISHING, MONSTER FISHING TACKLE, MONSTERFISHING.COM and any variations thereof.” Dkt. No. 42-6 at 2. 27 2 OPS contends that some of the OPS Marks have inherent distinctiveness, while other have 1 obligation to produce this discovery by referring Monster to third party publications if OPS has 2 responsive documents in its possession, custody, or control. The Court will not require OPS to 3 produce documents showing advertising and promotion that does not include the OPS Marks or 4 the word “Monster.” 5 C. Internal document referring to OPS Marks/products 6 Monster’s RFP 18 asks for: “All documents that mention or refer to an OPS Mark, 7 including documents that mention product names that include an OPS Mark (e.g., Monster 8 FishingTackle.com Die-Cut Vinyl Sticker 9"x 3" – White”).” For purposes of this dispute, 9 Monster asks the Court to order OPS to produce (1) internal correspondence and memos that 10 mention a Monster mark or product in the document’s body, subject line, or title; and (2) physical 11 and electronic files for a Monster mark or product. Dkt. No. 42-1 at 6. OPS represents that it will 12 produce additional emails responsive to this request that it has recently discovered and is seeking 13 responsive documents from OPS’s previous trademark attorney, some of which may be privileged. 14 Id. 15 OPS must perform a diligent search of email and other electronically stored files that 16 include a reference to an OPS Mark. The Court anticipates that conventional methods for 17 collection of ESI and application of search terms, consistent with the parties’ Stipulated ESI Order 18 (Dkt. No. 33), may be used to efficiently identify responsive documents. Responsive documents 19 must then be produced to Monster, unless they are subject to a claim of privilege or other 20 protection, in which case the privileged or protected document must be identified in a privilege 21 log. See Fed. R. Civ. P. 26(b)(5). OPS must also perform a diligent search of physical files for 22 responsive documents that include a reference to an OPS Mark. Such search must include 23 locations that are reasonably likely to contain responsive documents. OPS need not search for 24 responsive documents from sources that are not within its possession, custody, or control, such as 25 third-party websites. 26 Documents in the possession of current or former counsel held in the course of the 27 attorney-client relationship between counsel and OPS generally are considered within OPS’s 1 YGR, 2014 WL 3945590, at *2 (N.D. Cal. Aug. 11, 2014) (documents in defendant’s “possession, 2 custody, and control” included those “in the control of his current and former counsel”); Johnson 3 v. Askin Capital Mgmt., L.P., 202 F.R.D. 112, 114 – 15 (S.D.N.Y. Aug. 8, 2001) (citing “general 4 rule that a document held by prior counsel is deemed to be in a client’s possession”). OPS shall 5 request its prior trademark attorney to provide any such responsive, non-privileged documents to 6 OPS. 7 D. Documents relating to OPS’s adoption of OPS Marks 8 Monster’s RFP 19 asks for: “All documents relating to the origin, conception, or adoption 9 of the OPS Marks, including, but not limited to, documents relating to how You created, 10 conceived, selected or acquired the OPS Marks.” Monster’s RFP 21 asks for: “Any physical or 11 electronic files for an OPS Mark, including any design or development files.” Monster says that 12 OPS has produced no documents reflecting its conception or adoption of the OPS Marks. Monster 13 argues that it is implausible, given OPS’s assertions about the marks, that no such documents 14 exist. OPS responds that it has answered an interrogatory describing how the idea for the name 15 “Monster Fishing Tackle” came to Mr. Elie, its President, and that it has no responsive documents. 16 The Court is not persuaded that OPS has made a diligent search for responsive documents. 17 It must do so now. It is not sufficient to rely on an interrogatory answer to respond to a request for 18 production of documents. If, after a diligent search, OPS concludes that it has no responsive 19 documents that reflect the origin, conception, creation, development, selection, adoption, or 20 acquisition of the OPS Marks, it shall so state. 21 E. Evidence of OPS’s first use in commerce 22 Monster’s Interrogatory 1 asks: “For each category of product (goods or services) 23 identified in Monster’s Request for Production Nos. 1-13, describe the first use in commerce of 24 the OPS marks in that product category. Your description should at least include the names and 25 model numbers of the first product(s) sold under an OPS Mark in the product category; the 26 specific OPS mark(s) used in connection with each of those products and the manner in which 27 each mark was used (e.g., printed on the product, displayed on the packaging); where each of 1 period during which each of those products was offered for sale; and the date each of those 2 products was first sold.” Monster says that OPS’s response to this interrogatory is incomplete. 3 OPS responds that it is prepared to supplement its response to provide further detail. It also offers 4 to allow Monster access to OPS’s “point of sale” system. Dkt. No. 42-1 at 15. 5 In some circumstances, a party may appropriately respond to an interrogatory by producing 6 business records. See Fed. R. Civ. P. 33(d). However, the option to produce business records in 7 lieu of providing a written answer to an interrogatory may only be invoked if “the burden of 8 deriving or ascertaining the answer will be substantially the same for either party.” Id. The Court 9 is not persuaded that the documents OPS has already produced, or the documents available in its 10 “point of sale” system, satisfy this requirement. Accordingly, OPS must provide a complete, 11 written response to this interrogatory. If OPS does not have all of the information requested by 12 this interrogatory, it must make clear in its answer which information it does not have. 13 F. Financial records and information 14 Monster’s Interrogatory 6 asks: “Describe in detail Your expenditures on advertising, 15 marketing and promoting the OPS Marks since 2000, including by identifying, on an annual basis, 16 the total amount You spent and the amount You paid to each third party, and by providing the 17 production numbers of any documents showing that you made a payment to advertise, market or 18 promote the OPS Marks.” Monster’s Interrogatory 8 asks: “State Your gross profits, costs and net 19 profits, on an annual basis since 2000 and before taxes, for each product (good or service) sold 20 under an OPS Mark (identified by product name and catalog/model number).” Monster’s RFPs 21 54-57 ask for records sufficient to show OPS’s prices for goods and services sold under an OPS 22 Mark, monthly sales for such goods and services, and profits and costs for such goods and 23 services. 24 During the hearing on this matter, OPS represented that it is prepared to produce an 25 electronic spreadsheet showing its expenditures on advertising, marketing, and promotion of the 26 OPS Marks, responsive to Interrogatory 6. OPS shall promptly produce the spreadsheet to 27 Monster. 1 that it does not know how to extract responsive information from its own systems and records. 2 Ordinarily, such a response would not be acceptable. However, given the late stage of discovery 3 in this case, the Court orders as follows: If responsive information and documents are, in fact, 4 available in one or more electronic systems maintained by OPS, OPS may satisfy its obligations to 5 provide information and documents responsive to these discovery requests by making the systems 6 available for inspection by Monster and, if necessary, Monster’s expert or consultant, consistent 7 with the terms of the protective order (Dkt. No. 36). The Court expects OPS to facilitate 8 Monster’s access to these systems and the information they contain, including by making someone 9 available to answer questions about the operation of the systems and accessing responsive 10 information within the systems. Upon Monster’s application, the Court will consider shifting the 11 reasonable costs associated with extracting responsive information and documents from OPS’s 12 systems from Monster to OPS. 13 G. Instances of actual confusion 14 Monster’s Interrogatory 12 asks: “Describe any instances of actual confusion between (1) 15 You, any OPS Mark, or any good or service sold under an OPS Mark, and (2) Monster, a Monster 16 Mark, or any Monster Good or Service. Your description should include an identification of all 17 persons with knowledge of the alleged incidents and the production numbers all documents 18 relating to the alleged incidents.” OPS has responded to this interrogatory by referring Monster to 19 a portion of OPS’s document production. Monster says this response is insufficient because it 20 does not answer the interrogatory. 21 OPS must supplement its response to this interrogatory to identify all responsive instances 22 of actual confusion. If it is not aware of any such instances of actual confusion, it shall so state. 23 H. Evidence of secondary meaning 24 Monster’s Interrogatory 13 asks: “For each OPS Mark that You contend has acquired 25 secondary meaning, describe in detail the factual basis for Your contention, including by 26 identifying the date by which you contend the mark acquired secondary meaning and all 27 documents that support Your contention.” 1 by the relevant audience, survey evidence, the nature and extent of advertising or promotion 2 || involving the mark, the length and manner of use of the mark, and whether use of the mark has 3 || been exclusive. Filipino Yellow Pages, 198 F.3d at 1151. OPS’s response to this interrogatory is 4 || not fully responsive and is insufficiently specific. OPS must supplement its response to this 5 || interrogatory to identify the facts supporting its contention that each of the OPS Marks has 6 acquired secondary meaning, and any supporting documents. If it does not contend that a 7 particular mark has acquired secondary meaning, it shall so state. 8 || I. CONCLUSION 9 OPS must supplement its answers to interrogatories and its production of documents, as 10 directed above, by March 22, 2022. OPS and its counsel are reminded that the Federal Rules of 11 Civil Procedure require a party’s attorney to certify “to the best of [counsel’s] knowledge, 12 || information, and belief formed after a reasonable inquiry” that the discovery response complies 13 with the requirements of the Rules. See Fed. R. Civ. P. 26(g)(1)(B)G)-Gil). The reasonableness of 14 || counsel’s inquiry is measured by an objective standard and does not turn on a showing of good or 15 bad faith. Optronic Tech., Inc. v. Ningbo Sunny Elec. Co., Ltd., No. 16-cv-06370-EJD, 2020 WL a 16 2838806, at *3 (N.D. Cal. Jun. 1, 2020); see also Fed. R. Civ. P. 26 advisory committee’s note, 5 17 || 1983 amdt,, subdivision (g). 18 IT IS SO ORDERED. 19 Dated: March 11, 2022 20 21 Vrain ®, LD, □□□ 22 VIRGINIA K. DEMARCHI 73 United States Magistrate Judge 24 25 26 27 28