Bertini v. Apple, Inc.

Background

Charles Bertini seeks to cancel Apple's registration of the APPLE mark for educational and entertainment services. The Trademark Trial and Appeal Board dismissed Bertini's fraud-on-the-United States Patent and Trademark Office claims with prejudice and ruled for Apple on abandonment after trial. In this case, the trial judge dismissed the fraud claims, leaving abandonment as the issue described in the order.

The discovery dispute concerned Requests for Production 2, 3, 4, and 7. Requests 2, 3, and 4 sought documents held by Apple's attorneys that had been used in statements to the United States Patent and Trademark Office about use of the mark. Request 7 sought three sample documents per year from 2011 through 2015 showing consumer purchases of Apple's services offered under the APPLE mark.

Legal Standard

Federal Rule of Civil Procedure 26(b) generally permits discovery of nonprivileged information relevant to a claim or defense and proportional to the needs of the case. Proportionality considers factors including the importance of the issues, the amount at stake, the parties' access to information and resources, the importance of the discovery, and whether its burden or expense outweighs its likely benefit. Rule 26(b)(2)(C) requires limits on discovery that is unreasonably cumulative or duplicative or that can be obtained from a more convenient, less burdensome, or less expensive source. The party seeking to compel discovery has the initial burden of showing relevance and proportionality.

Ruling

The court denied the requests for attorney-held documents. Apple had produced the documents it relied on in its statements and argued that Bertini sought additional documents merely saved by its attorneys, which would require privilege review. The court found Requests 2, 3, and 4 duplicative, unnecessary, and disproportionate because they sought all documents in the attorneys' possession. The court also found Apple's compromise to produce additional use-in-commerce documents sufficient.

The court denied Request 7 for consumer-purchase records. It found those records unnecessary because United States Patent and Trademark Office guidelines require only promotional materials, such as an advertisement, brochure, or website printout, to prove use of a service mark. The court also relied on Ninth Circuit authority recognizing that advertisements or solicitations can show use in commerce. Because Apple had agreed to produce use-in-commerce documents, the court found the purchase records disproportionate.

The court denied the plaintiff's discovery requests and stated that the order disposed of the discovery motion, identified as ECF No. 75. The order was signed by Laurel Beeler, United States Magistrate Judge, and dated June 30, 2025.